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 .
Claim Interpretation
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function.
Such claim limitation is: “an activation means” in independent claim 1.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 13 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 13 recites the limitation "the second surfactant" in line 2. There is insufficient antecedent basis for this limitation in the claim since ‘a second surfactant’ has been deleted from claim 1. The Examiner notes, however, ‘a second surfactant’ is introduced in new dependent claim 21; should Applicant amend claim 13 to depend from claim 21, this rejection could be overcome.
Claim 17 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 17 recites the limitation "the one or more pH adjusting agent" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim since ‘one or more pH adjusting agents’ has been deleted from claim 1. The Examiner notes, however, ‘a pH adjusting agent’ is introduced in new dependent claim 21; should Applicant amend claim 17 to depend from claim 21, and delete the phrase “one or more” bridging lines 2-3, as well as the phrase “wherein the resin treatment composition includes the one or more pH adjusting agent and,” this rejection could be overcome.
Claim 18 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 18 recites the limitation "the salt" in line 2. There is insufficient antecedent basis for this limitation in the claim since ‘a salt’ has been deleted from claim 1. The Examiner notes, however, ‘a salt’ is introduced in new dependent claim 21; should Applicant amend claim 18 to depend from claim 21, and delete the phrase bridging lines 1-2 “wherein the resin treatment composition includes the salt and” this rejection could be overcome.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5, 6, 8, 10-12, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. (US 2018/0320055 – cited previously) as applied to claim 1 above, and further in view of Tang (US 9,951,266 – cited previously) as evidenced by SAFOAM User’s Guide (cited and provided previously).
With respect to independent claim 1, Chang et al. discloses a resin treatment composition, comprising:
a resin ([0020]-[0021]) selected from the group as claimed ([0006]),
a curing agent selected from the group as claimed ([0022], wherein “an amine” is suggested),
a surfactant ([0026]), and
a carrier fluid selected from the group consisting of an aqueous based solution, an organic solvent, and combinations thereof ([0024], wherein two or more permeability enhancing additives are included and [0025], wherein various organic solvents are disclosed as the permeability enhancing additive),
where the resin is a curable resin ([0006]; [0020]-[0022]).
Chang et al. discloses the resin treatment composition as set forth above wherein a permeability enhancing additive is included therein and the concentration thereof is varied to affect the consolidation strength and permeability of the consolidated pack; examples of such additives include volatile organic solvents ([0023]-[0025]). The reference, however, fails to disclose wherein the permeability enhancing additive is a chemical blowing agent, and wherein such is a chemical ingredient of multiple chemical ingredients incorporated into the resin composition that will generate gas by an activation means. Tang teaches chemical blowing agents as alternatives to physical blowing agents that include materials such as volatile solvents, wherein the chemical blowing agents are further suggested to include those that incorporate ingredients within a composition so as to generate gas by an activation means, i.e., elevated temperature, and lead to the formation of voids within the composition as a result of such activation (col. 7, l. 27-67). The Examiner notes, Tang’s suggested SAFOAM user’s guide provides evidence for the chemical blowing agents of Tang as including a chemical ingredient that will generate a gas. Since Tang suggests chemical blowing agents as an alternative to physical blowing agents/volatile organic solvents, it would have been obvious to one having ordinary skill in the art to try a chemical blowing agent as a permeability enhancing additive in forming the porous consolidated sand pack of Chang et al. in order to yield the predictable result of releasing a gas so as to form voids/pore spaces therein.
With respect to dependent claim 5, Chang et al. discloses wherein the curable resin is an epoxy resin, as set forth above. The reference, however, fails to disclose the epoxy equivalent weight thereof. It would have been obvious to one having ordinary skill in the art to try an epoxy having an equivalent weight within the range as claimed as an epoxy with such an equivalent weight could be chosen from a finite list of options of curable epoxies known for use in forming consolidated sand packs and it has been held "[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). See also 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 epoxy equivalent weight range as critical and it is unclear if any unexpected results are achieved by using such. Since the curable epoxy resin of Chang et al. produces a productive consolidated sand pack product, it does not appear that such would be considered an unexpected result of using an epoxy with an equivalent weight as claimed, and, as such, the determination of optimal epoxy equivalent weight would be achievable through routine experimentation in the art.
With respect to dependent claim 6, Chang et al. suggests wherein the curable resin is present in an amount of 10-25 volume percent ([0020]). Although silent to the weight percent as instantly claimed, it would have been obvious to one having ordinary skill in the art to provide for a weight percent of the curable resin as claimed since it has been held "[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, 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). In the instant case, such absence of criticality is exemplified by the extensiveness of the weight percent range claimed for the curable resin; furthermore, since the curable resin of Chang et al. is used in an amount to consolidate sand in a formation so as to produce a productive consolidated sand pack, it does not appear that such would be considered an unexpected result of providing for a weight percent of curable resin within the range as instantly claimed.
With respect to dependent claim 8, Chang et al. suggests wherein the curing agent is present in an amount of 10-25 volume percent ([0020]). Although silent to the weight percent as instantly claimed, it would have been obvious to one having ordinary skill in the art to provide for a weight percent of the curing agent as claimed since it has been held "[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). In the instant case, such absence of criticality is exemplified by the extensiveness of the weight percent range claimed for the curing agent; furthermore, since the curing agent of Chang et al. is used in an amount to consolidate sand in a formation so as to produce a productive consolidated sand pack, it does not appear that such would be considered an unexpected result of providing for a weight percent thereof within the range instantly claimed.
With respect to dependent claims 10 and 11, Chang et al. discloses the resin treatment composition as set forth above in the rejection of claim 1, wherein a permeability enhancing additive is included therein and the concentration thereof is varied to affect the consolidation strength and permeability of the consolidated pack; examples of such additives include volatile organic solvents ([0023]-[0025]). The reference, however, fails to disclose wherein the permeability enhancing additive is a chemical blowing agent, and wherein such releases a gas selected from the group as claimed in claim 10 and/or is a chemical selected from the group as claimed in claim 11. Tang further teaches chemical blowing agents as alternatives to physical blowing agents, as set forth above in the rejection of claim 1, wherein such include materials such as volatile solvents, wherein the chemical blowing agents are further suggested to include those that incorporate ingredients within a composition so as to generate gas and lead to the formation of voids within the composition as a result of such gas generation (col. 7, l. 27-67). Tang’s suggested SAFOAM user’s guide provides evidence for the chemical blowing agents of Tang as including a chemical ingredient that will generate a gas as claimed per claim 10 and wherein the chemical blowing agent includes a chemical as per claim 11. Since Tang suggests chemical blowing agents as an alternative to physical blowing agents/volatile organic solvents, it would have been obvious to one having ordinary skill in the art to try a chemical blowing agent as taught by Tang as a permeability enhancing additive in forming the porous consolidated sand pack of Chang et al. in order to yield the predictable result of releasing a gas so as to form voids/pore spaces therein.
With respect to dependent claim 12, Chang et al. discloses the resin treatment composition as set forth above in the rejection of claim 1, wherein a permeability enhancing additive is included therein and the concentration thereof is varied to affect the consolidation strength and permeability of the consolidated pack; examples of such additives include volatile organic solvents ([0023]-[0025]). The reference, however, fails to disclose wherein the permeability enhancing additive is a chemical blowing agent. Tang teaches chemical blowing agents as alternatives to physical blowing agents that include materials such as volatile solvents, wherein the chemical blowing agents (col. 7, l. 27-67), as set forth above in the rejection of claim 1. Since Tang suggests chemical blowing agents as an alternative to physical blowing agents/volatile organic solvents, it would have been obvious to one having ordinary skill in the art to try a chemical blowing agent as taught by Tang as a permeability enhancing additive in forming the porous consolidated sand pack of Chang et al. in order to yield the predictable result of releasing a gas so as to form voids/pore spaces therein. Given Chang et al.’s suggested amounts of permeability enhancing additive to include, when using the chemical blowing agent of Tang as an alternative thereto, it is the position of the Office one having ordinary skill in the art would recognize an optimal amount thereof to include for such a purpose since it has been held "[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 weight percent range of the chemical blowing agent as critical and it is unclear if any unexpected results are achieved by providing such. Since the permeability enhancing additive of Chang et al. is included in an amount to generate an effective porosity within the consolidated sand pack, it does not appear that such would be considered an unexpected result of using the instantly claimed amount of blowing agent, and, as such, the determination of an optimal amount thereof to include would be achievable through routine experimentation in the art. Alternatively, Tang suggests methods of servicing a wellbore with an epoxy based resin composition (abstract) wherein such a composition includes physical or chemical blowing agents therein; chemical blowing agents are suggested to decompose endothermically at elevated temperatures so as to generate gas/foam that becomes entrained in the composition so as to lead to the formation of voids therein and are included in the composition in an amount of 0.1-5 wt% by total weight of the composition (col. 7, l. 20-67). Since Chang et al. discloses wherein a permeability enhancing additive is included in the composition so as to generate porosity within the consolidated sand pack and Tang suggests an amount of chemical blowing agents used to create voids within a composition, it would have been obvious to one having ordinary skill in the art to try a chemical blowing agent in an amount as instantly claimed in order to provide an amount thereof capable of creating voids within a composition used in a wellbore.
With respect to dependent claim 14, Chang et al. discloses wherein the resin treatment composition includes the surfactant ([0026]), as well as wherein such is included in an amount to create a foam that entrains air bubbles ([0026]). Although silent to the amount thereof that is included, one having ordinary skill in the art would recognize an optimal amount thereof to employ so as to ensure the desired amount of air bubbles occupy the pore space to increase permeability, as based on the desired permeability to impart to the consolidated sand pack since it has been held "[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 weight percent range as critical and it is unclear if any unexpected results are achieved by providing such. Since the surfactant of Chang et al. is included in an amount to generate an effective porosity within the consolidated sand pack, it does not appear that such would be considered an unexpected result of using the instantly claimed amount of surfactant and, as such, the determination of an optimal amount thereof to include would be achievable through routine experimentation in the art.
With respect to dependent claim 16, Chang et al. suggests wherein the resin treatment composition includes the carrier fluid ([0024], wherein two or more permeability enhancing additives are included and [0023], wherein the organic solvent [0025] permeability enhancing additive increases injectivity of the chemical system) and wherein such is present in an amount of 50-80 volume percent ([0020]). Although silent to a weight percent thereof, given the suggestion of Chang et al. wherein the amount of such a component is varied as based on the desired consolidation strength and permeability ([0025]), it is the position of the Office that one having ordinary skill in the art would recognize an optimal amount thereof to employ in order to impart the productive consolidated sand pack with the desired strength and permeability since it has been held "[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). In the instant case, such absence of criticality is exemplified by the extensiveness of the weight percent range claimed for the carrier fluid; furthermore, since the carrier fluid of Chang et al. is used in an amount to deliver the resin composition to a formation so as to consolidate sand therein, it does not appear that such would be considered an unexpected result of providing for a weight percent thereof within the range instantly claimed.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. in view of Tang as evidenced by SAFOAM as applied to claim 1 above, and further in view of Rickman et al. (US 9,222,014 – cited previously).
Chang et al. teaches the resin treatment composition as set forth above within the rejection of claim 1, wherein Chang et al. discloses the inclusion of a surfactant for creating a foam ([0026]). Although silent to the type of such, given the surfactants listed in the Markush group, and the known use of each of such types of surfactants for forming a foam in a resin, the Examiner hereby takes Official Notice in that it would have been obvious to one having ordinary skill in the art to try at least one of such surfactants as the foaming surfactant in the composition of Chang et al. as such types of surfactants are well established for use in the art in foaming a consolidating resin composition, and, further are the main options used for such purposes.
The reference however, fails to disclose wherein a second surfactant is included and wherein such is selected from the group as claimed. Rickman et al. teaches curable resin systems that include a resin and hardening agent therefore, wherein a surfactant is included for the purpose of facilitating the coating of the resin onto particulates in the subterranean formation, and examples thereof include cationic surfactants and nonionic surfactants (col. 10, l. 47-62). As such, it would have been obvious to one having ordinary skill in the art to try at least cationic surfactant(s) and/or nonionic surfactant(s) as suggested by Rickman et al. in the composition of Chang et al. in order to facilitate the coating of the resin onto particulates within the subterranean formation wherein the productive consolidated sand pack is intended to be created.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. in view of Tang as evidenced by SAFOAM as applied to claim 1 above, and further in view of Murphey (US 4,199,484 – cited previously).
With respect to claim 17, Chang et al. suggests the resin treatment fluid as set forth above with respect to independent claim 1. The reference, however, is silent to the inclusion of a pH adjusting agent, and, further, wherein such is selected from the group as claimed. Murphey suggests epoxy resin compositions and optional additives used therewith for in situ sand consolidation, wherein a porous permeable or plugged consolidated mass is formed therewith (abstract). A buffer can be included therewith, such as an organic acid for the purpose of providing greater predictability for the epoxy resin hardening time (col. 9, l. 53-60). As such, it would have been obvious to one having ordinary skill in the art to optionally try a pH adjusting agent as claimed in the composition of Chang et al. in order to provide greater predictability of the resin hardening time.
With respect to claim 18, Chang et al. suggests the composition as set forth above with respect to claim 1. The reference, however, fails to suggest a salt within the resin treatment composition as instantly claimed. Murphey suggests epoxy resin compositions and optional additives used therewith for in situ sand consolidation, wherein a porous permeable or plugged consolidated mass is formed therewith (abstract). Salts, including monovalent and divalent salts can be included for the purpose of dispersing the epoxy resin so long as care is taken to avoid calcium precipitation (col. 9, l. 46-53). It would have been obvious to one having ordinary skill in the art to include a salt as claimed in the resin composition of Chang et al. so long as care is taken to avoid calcium precipitation so as to disperse the resin therewith for injection.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. in view of Tang as evidenced by SAFOAM as applied to claim 1 above, and further in view of Rickman et al. and Murphy.
Chang et al. suggests the composition as set forth above with respect to claim 1. The reference, however, fails to suggest a pH adjusting agent or salt within the resin treatment composition as instantly claimed.
Murphey suggests epoxy resin compositions and optional additives used therewith for in situ sand consolidation, wherein a porous permeable or plugged consolidated mass is formed therewith (abstract). A buffer can be included therewith, such as an organic acid for the purpose of providing greater predictability for the epoxy resin hardening time (col. 9, l. 53-60). As such, it would have been obvious to one having ordinary skill in the art to optionally try a pH adjusting agent as claimed in the composition of Chang et al. in order to provide greater predictability of the resin hardening time.
Murphey further suggests the inclusion of salts, for the purpose of dispersing the epoxy resin so long as care is taken to avoid calcium precipitation (col. 9, l. 46-53). It would have been obvious to one having ordinary skill in the art to include a salt as claimed in the resin composition of Chang et al. so long as care is taken to avoid calcium precipitation so as to disperse the resin therewith for injection.
Chang further fails to disclose wherein a second surfactant is included in the resin composition. Rickman et al. teaches curable resin systems that include a resin and hardening agent therefore, wherein surfactants are included for the purpose of facilitating the coating of the resin onto particulates in the subterranean formation (col. 10, l. 47-62). It would have been obvious to one having ordinary skill in the art to try an additional surfactant in the composition of Chang in order to facilitate the coating of the resin onto particulates within the subterranean formation wherein the productive consolidated sand pack is intended to be created.
Claims 1, 5, 6, 8, 12, 14, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Froelich (US 4,119,150) in view of Suresh et al. (US 2014/0027116).
With respect to independent claim 1, Froelich discloses a resin treatment composition (abstract), comprising:
a resin selected from the group as claimed (col. 8, l. 40-42; col. 9, l. 42-46),
a curing agent (col. 9, l. 14-17),
a chemical blowing agent where the chemical blowing agent is a chemical ingredient or multiple chemical ingredients incorporated into the resin treatment composition that will generate a gas by an activation means (col. 8, l. 47-60; col. 9, l. 13-41),
a surfactant (col. 11, l.17-26), and
a carrier fluid selected from the group as claimed (col. 9, l. 46-50; col. 11, l. 12-16), where the resin is a curable resin (abstract).
Froelich discloses wherein a curing agent in the form of an acid activating catalyst is included (col. 9, l. 14-17). The reference, however, fails to disclose a curing agent selected from the group as claimed. Suresh et al. teaches resin treatment compositions for producing a productive consolidated sand pack that contain a cured resin bound to sand particles wherein such is obtained from curing of a resin composition comprising a curable resin ([0031]-[0041]), wherein the curable resin can include thermoset resins such as epoxides or phenolics ([0032]), and, further, suggests various epoxy resins prepared by reactions with phenols ([0034]-[0037]), as well as curing agents therefor, including curing agents selected from the group as instantly claimed ([0042]-[0049]). Since Suresh et al. suggests resin treatment compositions for forming productive porous consolidated packs formed from epoxies as alternatives to, and, in some instances, comprising phenols, it would have been obvious to one having ordinary skill in the art to try an epoxy resin and curing agent therefore, such as those instantly claimed, as taught by Suresh et al. in the resin treatment composition of Froelich in order to yield the predictable result of forming a porous productive consolidated sand pack therewith.
With respect to dependent claim 5, Froelich discloses the curable resin wherein such is an in situ curable phenolic resin and like types (col. 8, l. 40-42). The reference, however, fails to disclose an epoxy resin, and, as such, fails to disclose one having an epoxy equivalent weight as claimed. Suresh et al. teaches resin treatment compositions used to produce productive consolidated sand packs ([0066]-[0067]; [0077]; claim 10, wherein it is noted the cured resin is bonded to the particles which include sand) wherein resins used therein comprise a curable resin ([0031]-[0041]) such as epoxides or phenolics ([0032]), and, further, suggests various epoxy resins prepared by reactions with phenols ([0034]-[0037]). Since Suresh et al. suggests epoxies as alternatives to, and, in some instances, comprising phenols, it would have been obvious to one having ordinary skill in the art to try an epoxy resin as taught by Suresh et al. in the resin treatment composition of Froelich in order to yield the predictable result of forming a porous productive consolidated sand pack therewith. With further regard to the epoxy equivalent weight thereof, Suresh et al. suggests several examples, including commercially available versions thereof such as DER 331 ([0037]). The Examiner notes, this resin is disclosed by Applicant as an example of resins suitable for use in the instant application ([0026] of the specification as filed). As such, although Suresh et al. fails to explicitly disclose the equivalent weight of the epoxy resin, it is the position of the Office that the epoxy resin of Suresh et al. would have an epoxy equivalent weight as claimed since it has been held “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(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). If there is any difference between the equivalent weight of the epoxy resin of Suresh et al. and that of the instant claims, the difference would have been minor and obvious, and determinable through routine experimentation. 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."). 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 equivalent weight range as critical and it is unclear if any unexpected results are achieved by using such. Since the epoxy resin of Suresh et al. produces a productive consolidated sand pack, it does not appear that such would be considered an unexpected result of using the presently claimed equivalent weight range.
With respect to dependent claim 6, Froelich discloses wherein the ratio of total water to resin present in the mixture is selected to regulate cell size and density of the foaming material autogenously formed (col. 9, l. 57-60), wherein low density foams are completely open while high density foams contain closed cells, thereby allowing the porosity and permeability characteristics to be varied in the in situ cured structure as desired for dealing with particular local conditions encountered (col. 10, l. 45-52). Although silent to the curable resin weight presence as claimed, it would have been obvious to one having ordinary skill in the art to employ an amount of curable resin within the range as claimed as based on the desired end result product to provide in the formation and porosity/permeability desired to be imparted thereto as based on conditions encountered in the formation since it has been held "[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). 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 curable resin concentration as critical and it is unclear if any unexpected results are achieved by providing for such. Since the resulting consolidated pack formed therewith in Froelich provides for a porous consolidated structure, it does not appear that such would be considered an unexpected result of providing the curable resin within an amount in the range as instantly claimed, and, as such, the determination of optimal weight percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 8, Froelich discloses the inclusion of a curing agent (col. 9, l. 14-17), wherein, in view of Suresh, provides for a curing agent selected from the group as claimed. The reference further suggests wherein the acid catalyst such provides rapid foaming reaction (col. 9, l. 57-67), wherein if the amount thereof is increased, the foam will set more rapidly (col. 11, l. 5-12). Although silent to the amount thereof in the treatment composition, it would have been obvious to one having ordinary skill in the art to provide for an amount of curing agent as claimed as based on the desired end result product to provide in the formation and porosity/permeability desired to be imparted thereto as based on conditions encountered in the formation since it has been held "[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). 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 curing agent concentration as critical and it is unclear if any unexpected results are achieved by providing for such. Since the resulting consolidated pack formed therewith in Froelich provides for a porous consolidated structure, it does not appear that such would be considered an unexpected result of providing the curing agent in an amount within the range as instantly claimed, and, as such, the determination of optimal weight percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 12, Froelich discloses wherein a volatile catalyst may be provided as a chemical blowing agent in the conventional manner and in the usual amounts thereof so that under elevated temperature, volatilization, expansion and foaming will occur (col. 8, l. 47-60). Although silent to the amount thereof as instantly claimed, it would have been obvious to one having ordinary skill in the art to provide for an amount of chemical blowing agent as claimed as based on the desired end result product to provide in the formation and porosity/permeability desired to be imparted thereto as based on conditions encountered in the formation since it has been held "[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). 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 chemical blowing agent concentration as critical and it is unclear if any unexpected results are achieved by providing for such. Since the resulting consolidated pack formed therewith in Froelich provides for a porous consolidated structure, it does not appear that such would be considered an unexpected result of providing the chemical blowing agent in an amount within the range as instantly claimed, and, as such, the determination of optimal weight percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 14, Froelich discloses wherein the resin treatment composition includes the surfactant, and further, wherein such may be present in an amount to increase toughness and resiliency of the foam (col. 11, l. 16-26). Although silent to such as in an amount by weight percent as instantly claimed, it would have been obvious to one having ordinary skill in the art to provide the surfactant in an amount as claimed as based on the toughness and resiliency desired for the porous consolidated pack since it has been held "[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). 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 surfactant presence as critical and it is unclear if any unexpected results are achieved by providing for such. Since the resulting consolidated pack formed therewith in Froelich provides for a porous consolidated structure, it does not appear that such would be considered an unexpected result of providing the surfactant in an amount within the range as instantly claimed, and, as such, the determination of optimal weight percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 16, Froelich discloses wherein the carrier fluid is present in an amount selected to regulate the cell size and density of the foaming materials (col. 9, l. 41-60; col. 11, l. 12-16). Although silent to the amount thereof in weight percent as claimed, it would have been obvious to one having ordinary skill in the art to employ an amount of carrier fluid within the range as claimed so as to provide a ratio of curable resin thereto as based on the desired end result product to provide in the formation and porosity/permeability desired thereof based on conditions encountered in the formation since it has been held "[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). 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 carrier fluid concentration as critical and it is unclear if any unexpected results are achieved by providing for such. Since the resulting consolidated pack formed therewith in Froelich provides for a porous consolidated structure, it does not appear that such would be considered an unexpected result of providing the carrier fluid within an amount in the range as instantly claimed, and, as such, the determination of optimal weight percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 17, Froelich discloses wherein the resin treatment composition includes a pH adjusting agent, and wherein the pH adjusting agent is selected from the group as claimed (col. 9, l. 48-49, wherein hydrochloric solution is included)
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Froelich in view of Suresh as applied to claim 1 above, and further in view of Hazlett et al. (US 4,844,163).
Froelich discloses the resin treatment composition as set forth above in the rejection of claim 1, wherein a chemical blowing agent is included therein and used as a chemical foaming agent to self-generate a gaseous product under exothermic conditions to achieve foaming of the curable resin component (col. 8, l. 47-60), thereby providing for a chemical blowing agent that releases one or more gases which are trapped in the cured resin and allow a foamed structure to form. The reference, however, fails to disclose a specific example thereof and, as such, fails to identify the gas and/or blowing agent as claimed.
Hazlett et al. suggests chemical blowing agents (abstract) which are used for foaming to include nitrogen releasing blowing agents, an example of which includes a hydrazide compounds (col. 4, 30-43).
Since Froelich discloses wherein chemical foaming agents known in the art to generate gaseous products may be used and Hazlett et al. suggests a nitrogen releasing blowing agent of hydrazide, it would have been obvious to one having ordinary skill in the art to try a nitrogen releasing blowing agent such as a hydrazide as the chemical blowing agent in the Froelich in order to yield the predictable result of releasing nitrogen therein and foaming the curable resin product.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Froelich in view of Suresh as applied to claim 1 above, and further in view of Rickman et al..
Froelich discloses the productive consolidated sand pack as set forth above within the rejection of claim 1, wherein wetting agents or surfactants can be included therein (col. 11, l. 17-26), thereby suggesting a surfactant and second surfactant as claimed. The reference however, fails to disclose wherein the surfactants includes a surfactant selected from the group as claimed.
Rickman et al. teaches curable resin systems that include a resin and hardening agent therefore, wherein a surfactant is included for the purpose of facilitating the coating of the resin onto particulates in the subterranean formation, and examples thereof include cationic surfactants and nonionic surfactants (col. 10, l. 47-62).
As such, it would have been obvious to one having ordinary skill in the art to try at least cationic surfactant(s) and/or nonionic surfactant(s) as suggested by Rickman et al. in the composition of Froelich in order to facilitate the coating of the resin onto particulates within the subterranean formation wherein the productive consolidated sand pack is intended to be created.
Claims 18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Froelich in view of Suresh as applied to claim 1 above, and further in view of Csabai et al. (US 5,232,955).
With respect to dependent claim 18, Froelich discloses the resin treatment composition as set forth above with respect to claim 1 wherein it is noted additional additives may be included therein. The reference, however, fails to disclose a salt as instantly claimed. Csabai et al. suggests the inclusion of water soluble salts, such as monovalent salts, in a resin containing liquid mixture used for forming a high-porosity filter within a subterranean formation (col. 3, l. 26-41). It would have been obvious to one having ordinary skill in the art to include a salt as instantly claimed in the resin composition of Froelich in order to impart additional porosity/permeability to the filter formed therewith in the formation, should such be desired, by providing a dissolvable component therein that can be removed therefrom after hardening.
With respect to new dependent claim 21, Froelich discloses wherein the resin treatment composition further comprises a pH adjusting agent (col. 9, l. 48-49) and second surfactant (col. 11, l. 17-26, wherein surfactants are disclosed, thereby suggesting a surfactant and second surfactant) wherein it is noted additional additives may be included therewith. The reference, however, fails to disclose a salt additive. Csabai et al. suggests the inclusion of water soluble salts in a resin containing liquid mixture used for forming a high-porosity filter within a subterranean formation (col. 3, l. 26-41). It would have been obvious to one having ordinary skill in the art to include a salt in the resin composition of Froelich in order to impart additional porosity/permeability to the filter formed therewith in the formation, should such be desired, by providing a dissolvable component therein that can be removed therefrom after hardening.
Claims 1, 5, 6, 8, 12-14, 16-18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Suresh et al. in view of Rickman and Froelich or claims 1, 5, 6, 8, 10-14, 16-18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Suresh et al. in view of Rickman and Tang as evidenced by SAFOAM User’s Guide.
With respect to independent claim 1, Suresh et al. discloses a resin treatment composition, comprising:
a resin selected from the group as claimed ([0031]-[0041]),
a curing agent selected from the group as claimed ([0042]; [0049]-[0050]; [0066]),
a chemical blowing agent ([0066]; [0068]),
a surfactant, and
a carrier fluid selected from the group as claimed ([0056]-[0058], wherein a solvent is included therewith),
where the resin is a curable resin (abstract).
Suresh et al. discloses the resin treatment composition as comprising an epoxy resin and curing agent system. The reference however, fails to disclose the inclusion of a surfactant therewith, and, therefore, fails to provide for wherein the surfactant includes a surfactant Rickman et al. teaches two-component epoxy resin systems that include a resin and hardening agent therefore, wherein materials suggested as hardening agents overlap those disclosed as curing agents by Suresh et al. (col. 9, l. 48-col. 10, l. 19); the hardening agent may have a surfactant included therewith (col. 8, l. 44-48). The surfactant is included for the purpose of facilitating the coating of the resin onto particulates in the subterranean formation (col. 10, l. 47-62). It would have been obvious to one having ordinary skill in the art to try a surfactant as suggested by Rickman et al. in the composition of Suresh et al. in order to facilitate the coating of the resin onto particulates within the subterranean formation.
Suresh et al. discloses wherein a chemical blowing agent, such as a reactive species, or a physical blowing agent, such as a volatile liquid or gas, is included therein so as to create a porosity effective to communicate a fluid, i.e., crude oil ([0066]). Exemplary gases are further suggested to include nitrogen or carbon dioxide ([0068]). The reference, however, fails to specify the chemical blowing agent as a chemical ingredient(s) incorporated into the resin composition that will generate a gas by activation means as claimed, wherein the chemical blowing agent releases one or more gases. Froelich teaches methods for producing a porous and permeable consolidated pack in a subterranean formation by injection of a curable resin therein, wherein a chemical or physical foaming agent may be included therein for the purpose of causing the resin to foam in a manner that provides for permeable resin foam structure (col. 9, l. 42- col. 10, l. 2). The chemical foaming agents are further suggested to be provided in a conventional manner so that under elevated autogenous exothermic reaction temperatures in the mixing chamber, the ingredients foam (col. 8, l. 40-65). Since Froelich suggests chemical blowing agents as alternatives to physical blowing agents and, further, wherein such comprise a chemical that will generate a gas by an activation means so as to enable the formation of the resulting porous resin foam structure, it would have been obvious to one having ordinary skill in the art to try a chemical blowing agent as suggested by Froelich as an alternative to the physical blowing agent incorporated into the resin treatment fluid of Suresh et al. in order to yield the predictable result of forming a porous foam structure in the subterranean formation therewith that can be used in the production of formation fluids.
In the alternative, Suresh et al. discloses wherein a chemical blowing agent, such as a reactive species, or a physical blowing agent, such as a volatile liquid or gas, is included therein so as to create a porosity effective to communicate a fluid, i.e., crude oil ([0066]). Exemplary gases are further suggested to include nitrogen or carbon dioxide ([0068]). The reference, however, fails to specify the chemical blowing agent as a chemical ingredient(s) incorporated into the resin composition that will generate a gas by activation means as claimed, wherein the chemical blowing agent releases one or more gases. Tang suggests methods of servicing a wellbore with an epoxy based resin composition (abstract) wherein such a composition includes physical or chemical blowing agents therein; chemical blowing agents are suggested to decompose endothermically at elevated temperatures so as to generate gas/foam that becomes entrained in the composition so as to lead to the formation of voids therein (col. 7, l. 20-67). Since Suresh et al. discloses wherein a chemical blowing agent is included in the composition so as to generate porosity within the consolidated sand pack and Tang suggests known chemical blowing agents used in the art to include those that incorporate ingredients within a composition so as to generate gas by an activation means, i.e., elevated temperature, and lead to the formation of voids within the composition as a result of such activation, it would have been obvious to one having ordinary skill in the art to try a chemical blowing agent such as those suggested by Tang in the composition of Suresh et al. in order to yield the predictable result of releasing a gas so as to form voids therein. The Examiner notes, the SAFOAM user’s guide included herewith as evidence provides for the chemical blowing agents of Tang as including a chemical ingredient that will generate a gas.
With respect to depending claim 5, Suresh et al. discloses the resin composition as including a curable resin that includes an epoxy resin; several examples thereof are provided, including commercially available versions thereof such as DER 331 ([0037]). The Examiner notes, this resin is disclosed by Applicant as an example of resins suitable for use in the instant application ([0026] of the specification as filed). As such, although Suresh et al. fails to explicitly disclose the equivalent weight of the epoxy resin, it is the position of the Office that the epoxy resin of Suresh et al. would have an epoxy equivalent weight as claimed since it has been held “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(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). If there is any difference between the equivalent weight of the epoxy resin of Suresh et al. and that of the instant claims, the difference would have been minor and obvious, and determinable through routine experimentation. 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."). 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 equivalent weight range as critical and it is unclear if any unexpected results are achieved by using such. Since the epoxy resin of Suresh et al. produces a productive consolidated sand pack, it does not appear that such would be considered an unexpected result of using the presently claimed equivalent weight range.
With respect to dependent claim 6, Suresh et al. discloses wherein the curable resin is present in an amount as claimed ([0053]).
With respect to dependent claim 8, Suresh et al. discloses wherein the curing agent is present in a range as claimed ([0053]).
With respect to claims 10 and 11, Suresh et al. discloses wherein a chemical blowing agent, such as a reactive species, or a physical blowing agent, such as a volatile liquid or gas, is included therein so as to create a porosity effective to communicate a fluid, i.e., crude oil ([0066]). Exemplary gases are further suggested to include nitrogen or carbon dioxide ([0068]). The reference, however, fails to specify the chemical blowing agent as a chemical ingredient(s) incorporated into the resin composition that will generate a gas by activation means as claimed, wherein the chemical blowing agent releases one or more gases as claimed which are trapped in the cured resin and allow a foamed structure to form and wherein the chemical blowing agent includes a chemical as claimed. Tang suggests methods of servicing a wellbore with an epoxy based resin composition (abstract) wherein such a composition includes physical or chemical blowing agents therein; chemical blowing agents are suggested to decompose endothermically at elevated temperatures so as to generate gas/foam that becomes entrained in the composition so as to lead to the formation of voids therein; exemplary chemical blowing agents include SAFOAM available from Reedy International Corporation (col. 7, l. 20-67). Since Suresh et al. discloses wherein a chemical blowing agent is included in the composition so as to generate porosity within the consolidated sand pack and Tang suggests known chemical blowing agents used in the art to include those that incorporate ingredients within a composition so as to generate gas by an activation means, i.e., elevated temperature, and lead to the formation of voids within the composition as a result of such activation, it would have been obvious to one having ordinary skill in the art to try a chemical blowing agent such as those suggested by Tang in the composition of Suresh et al. in order to yield the predictable result of releasing a gas so as to form voids therein. The Examiner notes, the SAFOAM user’s guide included herewith as evidence provides for the chemical blowing agents of Tang as including a chemical ingredient that will generate a gas, wherein the released gas includes a gas as claimed per claim 10 and wherein the chemical blowing agent includes a chemical as per claim 11.
With respect to dependent claim 12, Suresh et al. discloses wherein a chemical blowing agent, such as a reactive species, or a physical blowing agent, such as a volatile liquid or gas, is included therein so as to create a porosity effective to communicate a fluid, i.e., crude oil ([0066]; [0068]), i.e., suggesting the use of an amount thereof so as to generate an effective porosity in the sand pack. The reference, however, fails to suggest a specific amount thereof to include. Since Suresh et al. discloses the inclusion of an amount of chemical blowing agent effective to generate an effective porosity, one having ordinary skill in the art would recognize an optimal amount thereof to include for such a purpose since it has been held "[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 weight percent range as critical and it is unclear if any unexpected results are achieved by providing such. Since the blowing agent of Suresh et al. is included in an amount to generate an effective porosity within the consolidated sand pack, it does not appear that such would be considered an unexpected result of using the instantly claimed amount of blowing agent, and, as such, the determination of an optimal amount thereof to include would be achievable through routine experimentation in the art. Alternatively, Suresh et al. discloses wherein a chemical blowing agent, such as a reactive species, or a physical blowing agent, such as a volatile liquid or gas, is included therein so as to create a porosity effective to communicate a fluid, i.e., crude oil ([0066]; [0068]), i.e., suggesting the use of an amount thereof so as to generate an effective porosity in the sand pack. The reference, however, fails to suggest a specific amount thereof to include. Tang suggests methods of servicing a wellbore with an epoxy based resin composition (abstract) wherein such a composition includes physical or chemical blowing agents therein; chemical blowing agents are suggested to decompose endothermically at elevated temperatures so as to generate gas/foam that becomes entrained in the composition so as to lead to the formation of voids therein and are included in the composition in an amount of 0.1-5 wt% by total weight of the composition (col. 7, l. 20-67). Since Suresh et al. discloses wherein a chemical blowing agent is included in the composition so as to generate porosity within the consolidated sand pack and Tang suggests an amount of chemical blowing agents used to create voids within a composition, it would have been obvious to one having ordinary skill in the art to try a chemical blowing agent in an amount as instantly claimed in order to provide an amount thereof capable of creating voids within a composition used in a wellbore.
With respect to dependent claim 13, Suresh in view of Rickman provides for the resin treatment composition including surfactants, as provided above in the rejection of claim 1.
Rickman et al. further teaches examples thereof to include cationic surfactants and nonionic surfactants (col. 10, l. 47-62). As such, it would have been obvious to one having ordinary skill in the art to try at least a cationic surfactant or nonionic surfactant as suggested by Rickman in the composition of Suresh et al. in order to facilitate the coating of the resin onto particulates within the subterranean formation.
With respect to dependent claim 14, Suresh in view of Rickman provides for the resin treatment composition, as set forth above. The combination, however, is silent to wherein the surfactant is included in an amount as claimed. Rickman et al. teaches the surfactant as present in an amount of 1-10% by weight of the liquid hardening agent (col. 10, l. 47-62). As such, based on Rickman’s suggestion to include an amount based on the amount of hardening agent, and based on the amount of hardening/curing agent suggested by Suresh et al., one having ordinary skill in the art would recognize the optimal amount of surfactant to include in the resin composition of Suresh et al., based on the total weight thereof, in order to facilitate the coating the of resin onto the particulates of the subterranean formation since it has been held “[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).
With respect to dependent claim 16, Suresh et al. discloses wherein the carrier fluid is present in an amount as claimed ([0058]).
With respect to dependent claim 17, Suresh et al. discloses wherein the solvent can be an inorganic solvent, such as buffered or pH adjusted water ([0058]). Although silent to a pH adjusting agent used for such a purpose, since the reference clearly discloses the buffering/pH adjusting of the water, the Examiner hereby takes Official Notice in that it would have been obvious to one having ordinary skill in the art to use a well known pH adjusting agent for such a purpose as based on the desired pH to impart to the water, and, when choosing such a pH adjusting agent, to choose a pH adjusting agent as claimed as based on whether a basic or acidic pH is desired for the buffered/pH adjusted water. One having ordinary skill would recognize sodium hydroxide, potassium hydroxide or sodium carbonate as well known agents for achieving a more neutral/basic pH while the choice of either an organic acid or inorganic acid as the only options should a more acidic pH be desired since all acids are by nature organic or inorganic.
With respect to dependent claim 18, Suresh et al. discloses wherein the resin composition includes the salt and wherein the salt includes various inorganic metal salts, wherein options for such include metals that are divalent ([0050]). As such, it would have been obvious to one having ordinary skill in the art to try a divalent salt from the options listed therein since such is a suggested additive of Suresh et al. used in order to yield the predictable result of strengthening the nanocomposite bonded to the particles or increasing the porosity of the nanocomposite ([0050]).
With respect to new dependent claim 21, Suresh et al. discloses wherein the resin treatment composition further comprises a pH adjusting agent ([0058], wherein pH adjusted water is disclosed, and, therefore, the composition ultimately comprises a pH adjusting agent) and a salt ([0050]). Rickman further provides for the inclusion of surfactants as noted above. As such, it would have been obvious to one having ordinary skill in the art to include a second surfactant as instantly claimed in order to facilitate the coating of the resin onto formation particulates.
Response to Arguments
Applicant’s amendments made with respect to the claim objections and 35 USC 112 rejections, as set forth in the previous office action, have been fully considered and are persuasive in view of Applicant’s amendments..
Applicant’s arguments with respect to the rejections of claims as anticipated by Chang have been fully considered and are persuasive in view of Applicant’s amendments incorporating the subject matter of claim 9, previously rejected as obvious in view of Tang as evidenced by SAFOAM.
Applicant’s arguments with respect to the rejections, however, in view of Tang, are not persuasive.
Applicant asserts Tang teaches a foaming agent that may be a physical or chemical foaming agent and wherein the chemical foaming agent decomposes into gases that “become entrained in the polymer thus leading to the formation of voids within the polymer” but such a formation of voids within the polymer does not promote “permeability of fluid flow” as the permeability enhancing additive of Chang.
The Examiner respectfully disagrees.
Tang teaches chemical blowing agents as alternatives to the physical blowing agents that include materials such as the volatile solvents disclosed by Chang. Since Tang suggests chemical blowing agents as an alternative to physical blowing agents/volatile organic solvents, the Examiner maintains it would at least have been obvious to one having ordinary skill in the art to try a chemical blowing agent as the permeability enhancing additive in forming the porous consolidated sand pack of Chang et al. in order to yield the predictable result of releasing a gas so as to form voids/pore spaces therein as such is suggested as being capable of performing the same function as the physical blowing agents disclosed by Chang and thus would be expected to act in the same manner as such therein.
The Examiner notes, the additional grounds of rejection as presented above have been presented in view of Applicant’s amendments to independent claim 1 and presentation of new dependent claim 21.
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 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
05/22/26
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