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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/20/26 has been entered.
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 1-6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Allison et al. (US 2011/0094746).
With respect to independent claim 1, Allison et al. discloses a composition, comprising:
an aqueous spacer fluid or chemical wash ([0016]); and
a swelling or scrubbing agent, the swelling or scrubbing agent consisting of one as claimed ([0019]),
wherein the swelling or scrubbing agent has an aspect ratio ([0018]; [0029], herein the swellable particles have a wide variety of shapes and sizes suitable for use and, thus, the particles indeed have an aspect ratio).
Allison et al. discloses wherein the swellable particles may have a wide variety of shapes and sizes and further may include irregular geometries, including pellets, shavings, fibers, flakes, ribbons, rods, strips, spheroids, beads, pellets, tablets, or any other physical shape, and, further, wherein a particle size thereof may be in a range of 5-1500 microns ([0029]). The reference further suggests wherein the particles may swell up to about 200% of their original size at surface and up to about 50% downhole ([0018]). Although silent to the aspect ratio as falling within the range as claimed before and after swelling, since the reference clearly suggests particle shapes, i.e., fibers, ribbons, and strips, capable of having an aspect ratio before swelling in the extensive range claimed, it is the position of the Office that one having ordinary skill in the art would recognize an optimal aspect ratio of the swelling agent to employ prior to swelling and after contact with the oil based fluid when such is swelled in order to effectively prevent form the semi-solid crosslinked gel therewith 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). 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 aspect ratio before and after swelling for the swelling agent as critical, as exemplified by the extensiveness thereof; the specification rather discloses the use of elongated, fibrous, cylindrical and asymmetrical particles in [0030], noting wherein such allows more efficient oil absorption and it is unclear if any unexpected results are achieved by using particles having an aspect ratio over the entirety of the extensive range claimed. Since the particles of Allison et al. are also disclosed to have irregular shapes, as well as elongated shapes such as ribbons, strips and platelets, i.e., particle shapes capable of having an aspect ratio greater than 1, and further, since Allison et al. suggests such shapes as efficiently absorbing oil to form a semi-solid gel, it does not appear that such would be considered an unexpected result of providing for particles having an aspect ratio before and after swelling within the extensive range claimed, and, as such, the determination of optimal aspect ratio for the swellable particles of Allison et al. before and after swelling would be achievable through routine experimentation in the art.
Additionally, the Examiner notes, since Allison et al. suggests a swelling agent consisting of the same chemicals instantly claimed, i.e., at least acrylonitrile butadiene, such a swelling agent would be expected to act in the manner as claimed, i.e., be capable of swelling in an amount sufficient to provide an aspect ratio 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 in the extent of swelling of the swelling agent of acrylonitrile butadiene of Allison et al. and that of the instant claims, the difference would have been minor and obvious.
With respect to dependent claim 2, Allison et al. discloses wherein the swelling or scrubbing agent is present at a concentration of up to 50% by volume, or from about 5-95% by volume ([0028]). Although silent to a concentration between 0.1 and 15 lbm/bbl as instantly claimed, given the amount of swelling agent suggested by Allison et al., one having ordinary skill in the art would recognize the optimal amount thereof to include in the composition in order to impart the desired mechanical properties to the spacer fluid therewith ([0028]) since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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 concentration range for the swelling/scrubbing agent as critical and it is unclear if any unexpected results are achieved by using such. Since the swellable particles of Allison et al. are provided in an amount to provide the swellable spacer fluid with desired mechanical properties, it does not appear such is an unexpected result of the inclusion thereof in the spacer fluid, and, as such, the determination of optimal concentration necessary for achieving the intended purpose would be achievable through routine experimentation in the art.
With respect to dependent claim 3, Allison et al. discloses wherein, upon exposure to a non-aqueous fluid ([0019]), a volume of the swelling or scrubbing agent increases as claimed ([0018]).
With respect to dependent claim 4, Allison et al. discloses wherein the composition has a density as claimed ([0015]).
With respect to dependent claims 5 and 6, Allison et al. discloses wherein the swellable particles increase the viscosity of the semi-solid crosslinked gel structure, and wherein the increase in viscosity may be 10-fold or greater ([0018]). The reference additionally suggests wherein in the silicate-based gelling agent embodiment, the viscosity of the fluid will increase, wherein an activator is included for such a purpose with the type and amount thereof dependent upon the temperature of the formation and the desired time in which the viscosity of the treatment fluid should begin to increase and/or reach its final viscosity ([0030]-[0031]). In the polymer based embodiment, the viscosity of the polymer may fall within the range of 10-500 cP at 19oC ([0034]). It is further suggested wherein the swellable elastomers are stable in high-temperature environments ([0022]) and wherein the swellable fluids will set with time and temperature to form an elastic swellable semi-solid gelatinous material in the wellbore ([0049]). As such, although silent to the composition as having a viscosity within the range as claimed at the instantly claimed shear rate when at a temperature between the extensive range claimed, given the suggestion by Allison et al. for such fluids to be suitable for use in high temperature environments and to include polymers having a viscosity that may be 500 cP, wherein the fluid forms an elastic semi-solid gelatinous material in the wellbore at high formation temperatures, it is the position of the Office that it would have been obvious to one having ordinary skill in the art to provide for a viscosity as claimed for the aqueous spacer fluid of Allison et al as based on the conditions encountered in the particular formation in which it is to be used for the purposes intended therewith ([0050]-[0051]) 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). 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 viscosity ranges as critical, as exemplified by the extensiveness thereof, along with lack of clear examples and indication of the criticality of a viscosity of at least 500 cP as claimed in dependent claim 6, and it is unclear if any unexpected results are achieved by providing for such. Since the aqueous spacer fluid of Allison et is disclosed to effectively prevent mixing between a drilling fluid and cement, as well as to reduce or block fluid loss in a subterranean zone, it does not appear that such would be considered an unexpected result of providing for the viscosity as presently claimed, and, as such, the determination of optimal viscosity to impart thereto would be achievable through routine experimentation in the art.
With respect to dependent claim 9, Allison et al. discloses at least one surfactant ([0046]-[0047]).
With respect to dependent claim 10, Allison et al. discloses at least one viscosifying agent ([0012]-[0013], wherein both a polymer and non-polymer gelling system is disclosed).
With respect to dependent claim 11, Allison et al. discloses wherein the swelling or scrubbing agent consists of acrylonitrile butadiene ([0019]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Allison et al. as applied to claim 1 above, and further in view of Medvedev et al. (WO 2020009918 A1).
Allison et al. discloses the spacer fluid, as set forth above, wherein such may further be suitable for use in reducing the permeability of the subterranean zone to reduce fluid loss therein ([0050]-[0051]). The reference further suggests wherein such may include various additives, including filtration control additives ([0045]). Allison et al., however, fails to disclose wherein the composition further comprises a non-swellable polypropylene or a non-swellable polyethylene as claimed. Medvedev et al. teaches aqueous well fluids containing an oil-absorbent material that is placed in a subterranean well after a drilling fluid for the purpose of allowing the oil-absorbent material to contact the non-aqueous fluid therein and improve zonal isolation (abstract). The aqueous fluid may further include fluid loss control and loss circulation additives, as well as additives for the purpose of enhancing flexibility and/or toughness of the set composition, wherein such additives includes non-swellable polypropylene or non-swellable polyethylene, with further examples of additives suggested as acrylonitrile butadiene ([0029]). Since Allison et al. provides for the inclusion of acrylonitrile butadiene in the aqueous fluid disclosed therein, wherein such is placed in a well so as to set and reduce permeability ([0049]-[0051]), and, further, suggests various additives may further be included therein ([0045]), it would have been obvious to one having ordinary skill in the art to try an additives such as the non-swellable polypropylene or non-swellable polyethylene of Medvedev et al. therein in order to yield the predictable result of enhancing the flexibility and/or toughness of the elastic swellable semi-solid gelatinous material in the wellbore therewith.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Allison et al. as applied to claim 1 above, and further in view of Santra et al. (US 2014/0166285 – cited previously).
Allison et al. discloses the composition as set forth above with respect to claim 1, wherein it is further disclosed additional components may be included therein, including dispersants ([0045]). The reference, however, fails to disclose an example thereof. Santra et al. teaches spacer fluids that include elastomers ([0062]) wherein such are further suggested to include a dispersing agent such as a lignosulfonate for the purpose of improving the compatibility of fluids which would otherwise be incompatible ([0142]-[0143]). It would have been obvious to one having ordinary skill in the art to include a dispersant such as a lignosulfonate in the elastomer containing spacer of Allison et al. in order to improve the compatibility of components therein.
Response to Arguments
Applicant’s arguments with respect to the 35 USC 112 rejection of claim 6, as set forth in the previous office action, have been fully considered and are persuasive. The 35 USC 112 rejection as set forth therein has been withdrawn.
Applicant’s arguments, with respect to the rejection(s) of claim(s) over the prior art, as set forth in the previous office, have been fully considered and are persuasive in view of Applicant’s amendments. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of further consideration of Applicant’s amendments.
Conclusion
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
08/21/26
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