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 II in the reply filed on 01/23/26 is acknowledged.
Claims 1-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/23/26.
Since claim 1 is non-elected and withdrawn, Applicant is advised to incorporate the text thereof into each of claims 15 and 18.
Specification
The abstract of the disclosure is objected to because it begins with the phrase “The present disclosure relates to,” and repeats the phrase in the third sentence; these phrases can be implied. Correction is required. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15, 16 and 18 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. Claims 15 and 18 each refer to “a/the wellbore fluid according to claim 1.” Reading each of claims 15 and 18 as incorporating the text of claim 1, claim 1 recites “a non-crosslinked copolymer of non-carboxylated monomers selected from a compound having the formula (1):…; a compound having the formula (2)…; and a mixture thereof.” It is unclear if Applicant is intending to use Markush language here and thus limit the monomers of the copolymer to include only those of formula (1), formula (2) and a mixture thereof, as would be encompassed by the phraseology “selected from the group consisting of,” i.e., in this instance, for example – selected from the group consisting of of or if the copolymer may include, for example, one of such monomers, i.e., a compound of formula (1) only with an additional monomer outside of those represented by formulas (1) and (2) so as to form a copolymer. Clarification is required. Claim 16 is rejected by virtue of its dependency upon a rejected base claim.
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. Independent claim 17 recites “a non-crosslinked copolymer of monomers selected from a compound having the formula (1):…; a compound having the formula (2)…; and a mixture thereof.” It is unclear if Applicant is intending to use Markush language here and thus limit the monomers of the copolymer to include only those of formula (1), formula (2) and a mixture thereof, as would be encompassed by the phraseology “selected from the group consisting of,” i.e., in this instance, for example – selected from the group consisting of of or if the copolymer may include, for example, one of such monomers, i.e., a compound of formula (1) only with an additional monomer outside of those represented by formulas (1) and (2) so as to form a copolymer. Clarification is required.
Claims 15, 16 and 18 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. Claims 15 and 18 each refer to “a/the wellbore fluid according to claim 1.” Reading each of claims 15 and 18 as incorporating the text of claim 1, claim 1 recites the limitation "a compound having the formula (1)" and “a compound having the formula (2).” There is insufficient antecedent basis for this limitation in the claim as neither ‘a formula (1)’ nor ‘a formula (2)’ was previously claimed. Clarification is required. Claim 16 is rejected by virtue of its dependency upon a rejected base claim.
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 "a compound having the formula (1)" and “a compound having the formula (2).” There is insufficient antecedent basis for this limitation in the claim as neither ‘a formula (1)’ nor ‘a formula (2)’ was previously claimed. Clarification is required.
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 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Guichard et al. (US 2004/0129459).
With respect to independent claim 15, Guichard et al. discloses a method for conducting an oilfield operation in a wellbore comprising placing a wellbore fluid according to claim 1 into the wellbore ([0030]), wherein, as per claim 1, Guichard et al. discloses a wellbore fluid comprising a water-based fluid ([0019]; [0040]) and a latex comprising a non-crosslinked ([0034], wherein the polymer is disclosed as linear) copolymer of non-carboxylated monomers selected from a compound having the formula (1)/(2)/and mixtures thereof ([0035]-[0036], wherein the copolymer is formed by polymerization using emulsion/controlled radical techniques and includes monomers such as alkyl acrylates, including Applicant’s further dependently claimed butylacrylate and 2-ethylhexylacrylate).
Guichard et al. discloses wherein a wide variety of polymers or copolymers can be utilized, and, further, wherein such are prepared by various polymerization processes, including emulsion polymerization and controlled radical solution polymerization ([0035]). Monomers used to form such polymers/copolymers are further disclosed to include alkyl acrylates such as 2-ethylhexylacrylate, butyl acrylate, vinyl acetate and combinations thereof ([0036]). The Examiner notes, these specific monomers are disclosed as options of compounds of formula (1) and formula (2) in [0028]-[0029] of the instant specification as filed. As such, when forming the polymer/copolymer of Guichard et al., it would have been obvious to one having ordinary skill in the art to provide for a non-crosslinked/linear copolymer of monomers of a compound having the formula (1), formula (2) or a mixture thereof since such compounds are part of a finite number of options disclosed as suitable for forming the copolymer of Guichard et al. and one having ordinary skill in the art would thus recognize suitable copolymers that can be formed therefrom in order to yield the predictable result of reducing fluid loss therewith. A person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
With respect to dependent claim 16, Guichard et al. discloses wherein the oilfield operation is one as claimed ([0030]).
With respect to independent claim 17, Guichard et al. discloses a method of modifying fluid loss properties of a wellbore fluid ([0017]-[0018]) containing a water-based fluid ([0019]; [0040]), the method comprising the step of adding a latex comprising a non-crosslinked ([0034], wherein the polymer is disclosed as linear) copolymer of monomers selected from a compound having the formula (1)/(2)/and mixtures thereof ([0035]-[0036], wherein the copolymer is formed by polymerization using emulsion/controlled radical techniques and includes monomers such as alkyl acrylates, including Applicant’s further dependently claimed butylacrylate and 2-ethylhexylacrylate).
Guichard et al. discloses wherein a wide variety of polymers or copolymers can be utilized, and, further, wherein such are prepared by various polymerization processes, including emulsion polymerization and controlled radical solution polymerization ([0035]). Monomers used to form such polymers/copolymers are further disclosed to include alkyl acrylates such as 2-ethylhexylacrylate, butyl acrylate, vinyl acetate and combinations thereof ([0036]). The Examiner notes, these specific monomers are disclosed as options of compounds of formula (1) and formula (2) in [0028]-[0029] of the instant specification as filed. As such, when forming the polymer/copolymer of Guichard et al., it would have been obvious to one having ordinary skill in the art to provide for a non-crosslinked/linear copolymer of monomers of a compound having the formula (1), formula (2) or a mixture thereof since such compounds are part of a finite number of options disclosed as suitable for forming the copolymer of Guichard et al. and one having ordinary skill in the art would thus recognize suitable copolymers that can be formed therefrom in order to yield the predictable result of reducing fluid loss therewith. A person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
With respect to independent claim 18, Guichard et al. discloses a method of sealing of an interval of a wellbore ([0050], i.e., by formation of a filter cake therein) comprising injecting the wellbore fluid according to claim 1 into the wellbore ([0030]), wherein, as per claim 1, Guichard et al. discloses a wellbore fluid comprising a water-based fluid ([0019]; [0040]) and a latex comprising a non-crosslinked ([0034], wherein the polymer is disclosed as linear) copolymer of non-carboxylated monomers selected from a compound having the formula (1)/(2)/and mixtures thereof ([0035]-[0036], wherein the copolymer is formed by polymerization using emulsion/controlled radical techniques and includes monomers such as alkyl acrylates, including Applicant’s further dependently claimed butylacrylate and 2-ethylhexylacrylate).
Guichard et al. discloses wherein a wide variety of polymers or copolymers can be utilized, and, further, wherein such are prepared by various polymerization processes, including emulsion polymerization and controlled radical solution polymerization ([0035]). Monomers used to form such polymers/copolymers are further disclosed to include alkyl acrylates such as 2-ethylhexylacrylate, butyl acrylate, vinyl acetate and combinations thereof ([0036]). The Examiner notes, these specific monomers are disclosed as options of compounds of formula (1) and formula (2) in [0028]-[0029] of the instant specification as filed. As such, when forming the polymer/copolymer of Guichard et al., it would have been obvious to one having ordinary skill in the art to provide for a non-crosslinked/linear copolymer of monomers of a compound having the formula (1), formula (2) or a mixture thereof since such compounds are part of a finite number of options disclosed as suitable for forming the copolymer of Guichard et al. and one having ordinary skill in the art would thus recognize suitable copolymers that can be formed therefrom in order to yield the predictable result of reducing fluid loss therewith. A person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-13 of U.S. Patent No. 12,391,862 (‘862 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because method claims 15, 16 and 18 are fully encompassed by the method as previously issued in ‘862, wherein a narrower wellbore fluid was claimed. As such, instant claims 15, 16 and 18 would indeed be obvious thereover. Instant claim 17 would further be obvious over claims 11-13 as issued in ‘862 in that instant claim 17 merely requires the addition of the latex additive comprising a non-crosslinked copolymer of monomers selected from a compound having formula (1), (2), or a mixture thereof to the wellbore fluid; since claims 11 and 12 of ‘862 provide for the inclusion of the same additive in the wellbore fluid, such would indeed provide for modification of the fluid loss properties thereof since it has been held “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable; if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present, and, as such, the method of modifying fluid loss properties of a wellbore fluid with the additive instantly claimed would be obvious over the methods as patented in ‘862.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2011/0281778 discloses methods of reducing fluid loss in oil based wellbore fluids using an aqueous dispersion of a copolymer that comprises a 2-ethylhexyl acrylate monomers.
US 2016/0130497 discloses wellbore fluids that include monomers of a compound of instantly claimed formula (1) and defines a film-forming emulsion copolymer as a latex.
US 2002/0161087 discloses aqueous based wellbore fluids that include a latex of a block copolymer that may include various alkyl acrylates and vinyl acetate.
US 2016/0304769 discloses a dispersion polymer used in a high salt brine that include vinyl acetate and 2-ethylhexyl acrylate.
US 2018/0312621 discloses a rheology agent useful in high salt base fluids that includes a copolymer of various monomers, such as 2-ethylhexyl acrylate and vinyl acetate.
US 2013/0319667 discloses degradable latexes in aqueous carriers that include copolymers formed from monomers that include vinyl acetate and 2-ethylhexyl acrylate.
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.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
03/09/26