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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1 and 4-18 in the reply filed on 11/17/25 is acknowledged.
Claims 2, 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/17/25.
Claim Objections
Claim 1, along with claims 4-18, dependent therefrom, is objected to because of the following informalities: In the phrase “one or more of a resin, a curing agent, a chemical blowing agent, a surfactant, a carrier fluid, where the resin is a curable resin,” a conjunction, i.e., and or or, should be added between “a surfactant” and “a carrier fluid.” Appropriate correction is required.
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 1, along with claims 4-18, dependent therefrom, 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 1 recites “A resin treatment composition, comprising: one or more of a resin, a curing agent, a chemical blowing agent, a surfactant, a carrier fluid, where the resin is a curable resin; and optionally…”. As such, it is unclear if Applicant is indeed requiring the composition to include a resin. Since the composition is “comprising one or more of” a group that includes resin, it appears Applicant is claiming resin as an option that may be included, but, also, may not be. For example, a resin composition comprising a chemical blowing agent would read within the context of “one or more of.” In such an instance, however, the resin would not be included and it is therefore unclear as to if Applicant’s resin composition is intended to indeed require resin or is a “resin composition” by name only and may include rather a curing agent or a chemical blowing agent or a surfactant or a carrier fluid since such would provide for a resin composition comprising one of the group as claimed. Clarification is required. Applicant may consider requiring the resin composition as comprising a resin and one or more of the group that follows in the instantly claimed group if the resin is indeed required.
Claims 4 and 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 4 recites “wherein the curable resin is;” claim 1, upon which claim 4 depends, however, does not positively require the curable resin. Claim 1 rather states “and one or more of a resin, a curing agent, a chemical blowing agent, a surfactant, a carrier fluid, where the resin is a curable resin, and optionally one or more of a pH adjusting agent, a second surfactant and a salt.” As such, it is not clear if the composition is indeed required to include the resin/curable resin. Applicant is advised to positively require the composition as including the resin/curable resin, for example, by amending claim 4 to recite “The resin treatment composition of claim 1, wherein the resin treatment composition includes the curable resin and wherein the curable resin is.” Claim 5 is rejected herein by virtue of its dependency upon a claim 4.
Claim 7 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 7 recites “wherein the curing agent is;” claim 1, upon which claim 7 depends, however, does not positively require the curing agent. Claim 1 rather states “and one or more of a resin, a curing agent, a chemical blowing agent, a surfactant, a carrier fluid, where the resin is a curable resin, and optionally one or more of a pH adjusting agent, a second surfactant and a salt.” As such, it is not clear if the composition is indeed required to include the curing agent. Applicant is advised to positively require the composition as including the curing agent, for example, by amending claim 7 to recite “The resin treatment composition of claim 1, wherein the resin treatment composition includes the curing agent and wherein the curing agent is selected from the group consisting of.”
Claims 9-11 are each 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. Claims 9-11 each recite “wherein the chemical blowing agent;” claim 1, upon which claims 9-11 each depend, however, does not positively require the chemical blowing agent. Claim 1 rather states “and one or more of a resin, a curing agent, a chemical blowing agent, a surfactant, a carrier fluid, where the resin is a curable resin, and optionally one or more of a pH adjusting agent, a second surfactant and a salt.” As such, it is not clear if the composition is indeed required to include the chemical blowing agent. Applicant is advised to positively require the composition as including the chemical blowing agent, for example, by amending claims 9-11 to each recite “The resin treatment composition of claim 1, wherein the resin treatment composition includes the chemical blowing agent and wherein the chemical blowing agent.”
Claim 15 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 15 recites “wherein the carrier fluid;” claim 1, upon which claim 15 depends, however, does not positively require the carrier fluid. Claim 1 rather states “and one or more of a resin, a curing agent, a chemical blowing agent, a surfactant, a carrier fluid, where the resin is a curable resin, and optionally one or more of a pH adjusting agent, a second surfactant and a salt.” As such, it is not clear if the composition is indeed required to include the carrier fluid. Applicant is advised to positively require the composition as including the carrier fluid, for example, by amending claim 15 to recite “The resin treatment composition of claim 1, wherein the resin treatment composition includes the carrier fluid and wherein the carrier fluid is selected from the group consisting of.”
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 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, 4, 7 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chang et al. (US 2018/0320055).
With respect to independent claim 1, Chang et al. discloses a resin treatment composition, comprising:
one or more of a resin ([0020]-[0021]), a curing agent ([0022]), a surfactant ([0026]), and a carrier fluid, where the resin is a curable resin ([0006]; [0020]-[0022]); and optionally one or more of a pH adjusting agent, a second surfactant, and a salt (as these components are optional, they are not required).
With respect to dependent claim 4, Chang et al. discloses wherein the curable resin is selected from the group as claimed ([0006]).
With respect to dependent claim 7, Chang et al. discloses wherein the curing agent is selected from the group as claimed ([0022], wherein “an amine” is suggested).
With respect to dependent claim 15, Chang et al. discloses wherein the resin treatment composition includes the carrier fluid and wherein the carrier fluid is 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).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5, 6, 8, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al..
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 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.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. as applied to claim 1 above, and further in view of Tang (US 9,951,266) as evidenced by SAFOAM User’s Guide.
With respect to dependent claim 9, 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 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 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 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 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). 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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Chang et al. as applied to claim 1 above, and further in view of Rickman et al. (US 9,222,014).
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. as applied to claim 1 above, and further in view of Murphey (US 4,199,484).
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2014/0027116 discloses a resin treatment composition comprising a resin, a chemical blowing agent, a curing agent and a carrier fluid.
US 4119150 discloses a resin treatment composition comprising a resin, a chemical blowing agent, a curing agent, a surfactant and a carrier fluid.
US 6,213,209 discloses a resin treatment composition comprising a resin, a chemical blowing agent, a curing agent, a surfactant and a carrier fluid.
US 6302207 disclose an open cell structure foam used within a resin consolidated sand pack.
US 5101900 and US 5154230 disclose the use of a gas generator to form open pores within a resin mass.
US 4842072 discloses the formation of a consolidated mass around a wellbore.
US 3500928 discloses the injection of a compound that releases a gas in the formation so as to form a permeable consolidated sand pack.
US 2022/0290035 discloses the formation of a porous structure within a consolidated resin pack.
US 9,222,014 discloses a consolidating resin that can be in emulsified form or contain a foam and used to form a porous consolidated sand pack.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached on 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
01/17/26