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 .
Specification
The amendment filed 07/01/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
[0017] has been amended to require “After curing, the cement composition possesses a compressive strength in the range of 250 psi to 7,000 psi.”
Although this amendment was added in response to the specification objection for not providing proper antecedent basis for the cement having a compressive strength ranging from 250 psi to 7,000 psi, as was previously recited in dependent claim 5, the Examiner notes, claim 5 did not recite wherein such a compressive strength was that for the cement composition, and, further, wherein such was indeed after curing. As such, Applicant’s amendments to the specification are new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 5 has been amended to require “wherein the cement composition, after curing, has a compressive strength ranging from 250 psi to 7,000 psi.” The specification, as filed, does not disclose and/or provide an example of such. As such, Applicant’s amendments constitute new matter.
Claim Rejections - 35 USC § 102
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 1-4, 6, 17 and 18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Amer et al. (US 2024/0059957 – cited previously).
With respect to independent claim 1, Amer et al. discloses a cement composition ([0072]) comprising: a cement precursor ([0017], wherein such is used with a cementing composition); and eutectic metal alloy particles 14 ([0022]) having an average particle size from 200 to 1000 microns ([0029], wherein the particles have a size of at least 1 micron and can be in a range of 1 micron to 1 mm).
With respect to dependent claims 2 and 3, Amer et al. discloses wherein the eutectic metal alloy particles comprise one or more as claimed, and, further, comprise bismuth and tin ([0024]-[0025]).
With respect to dependent claim 4, Amer et al. discloses wherein the eutectic metal alloy particles have an average particle size as claimed ([0029]).
With respect to dependent claim 6, Amer et al. discloses wherein the cement composition further comprises an additive selected from the group as claimed ([0069]).
With respect to new dependent claims 17 and 18, Amer et al. discloses wherein the eutectic metal alloy particles are solid eutectic metal alloy particles that melt upon contact with a heat source, and, further wherein the melting temperature of the solid eutectic metal alloy particles is in the range as claimed ([0023]-[0024]).
Claim Rejections - 35 USC § 102
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 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Amer et al. as applied to claim 1 above, and further in view of Pearl, Jr. et al. (US 2021/0222512 – cited previously).
With respect to dependent claim 5, Amer et al. discloses the cement composition, as set forth above wherein such is used in a fluid loss treatment in combination with cementing ([0017]); the reference, however, fails to explicitly specify wherein the cement composition cures, and/or a compressive strength range thereof after curing. Pearl, Jr. et al. teaches a mixture of eutectic metal alloy particles ([0021]) in a carrier fluid that comprises an uncured cement or cement slurry, wherein such may cure as a function of time to form a cured cement in a wellbore ([0025]). Such a cured cement is used to control loss zones therein ([0018]; [0031]). It would have been obvious to one having ordinary skill in the art to provide for a cement composition that cures downhole when employing the eutectic metal alloy particles of Amer et al. within a cement slurry in order to form a cured cement and effectively seal the loss zone therewith. With regard to the particular compressive strength thereof, the Examiner notes, Amer et al. suggests wherein the treatment is increases the pressure in the interval by at least 50 psi to 500 psi ([0019]). Thus, although the combination of Amer et al. in view of Pearl, Jr. et al. is silent to wherein the cement composition has a compressive strength within the range as claimed, since the fluid loss treatment itself of Amer et al. when used with cement increases the fracture gradient by a pressure value in the range of 50 psi to 500 psi, when such is used in combination with a wellbore composition including a cementing composition, it would have been obvious to one having ordinary skill in the art to provide for a cement having a compressive strength within the range as claimed in order to increase the fracture gradient of the formation 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 compressive strength of the cement as critical, as further evidenced by the lack of disclosure thereof therein, and it is unclear if any unexpected results are achieved by using the instantly claimed concentration ranges. Since the cement composition of Amer et al. increases the fracture gradient of the formation, it does not appear that such would be considered an unexpected result of providing for a cement having a compressive strength within the range as claimed, and, as such, the determination of optimal compressive strength of cement to provide would be achievable through routine experimentation in the art as based on the conditions encountered in the formation treated therewith.
With respect to new dependent claim 19, Amer et al. discloses the cement composition, as set forth above wherein such is used in a fluid loss treatment in combination with cementing ([0017]); the reference, however, fails to explicitly disclose a weight percent of the cement precursor based on the total weight of the composition as claimed. Pearl, Jr. et al. teaches a mixture of eutectic metal alloy particles ([0021]) in a carrier fluid that comprises an uncured cement or cement slurry, wherein such may cure as a function of time to form a cured cement in a wellbore ([0025]). Such a cured cement is used to control loss zones therein ([0018]; [0031]). The metal particles of Pearl, Jr. et al. are included based on the particular application, with a concentration thereof of 5-95% by weight suggested ([0026]). Although silent to the amount of cement precursor in the composition, given the weight percent range of metal material included in a carrier fluid, as well as wherein it is suggested the carrier includes uncured cement, i.e., cement precursor, in an amount effective to cure and seal a lost circulation zone, it is the position of the Office that one having ordinary skill in the art would recognize the optimal amount thereof to include with the metal material in the method of Amer et al., in view of Pearl, Jr. et al., in order to effectively seal the lost circulation zone therewith 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 cement precursor weight percent range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the cement composition of Amer et al. in view of Pearl, Jr. et al. is suggested as capable of sealing fluid loss zones and remediating fractures in a structure comprising the cement composition, as is instantly disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for the cement precursor in an amount within the extensive range claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
Response to Arguments
Applicant’s amendments with respect to the drawing objections have been fully considered and are persuasive. The objections to the drawings in the previous office action have been withdrawn.
Applicant's arguments with respect to the rejections of claims as anticipated by Amer et al. have been fully considered but they are not persuasive. Applicant asserts Amer’s upper limit for the average particle size is 100 microns whereas the pending claims require a lower limit of 200 microns, and, as such, the claims are not anticipated by Amer et al.. The Examiner respectfully disagrees. Amer et al. discloses in [0029] wherein the metallic fluid loss additives have an average size “of at least 1µm…or 100 µm. In an aspect, the metallic fluid loss additives can have an average particle size (d50) in a range of 1 µm to 1mm.” The Office notes, 1mm is equivalent to 1000 µm, and, as such, Amer suggests the average particle size range as claimed.
Applicant’s arguments with respect to the rejections of claims as anticipated by, and unpatentable over, Pearl, Jr. et al. have been fully considered and are persuasive in view of Applicant’s amendments. The rejections made with respect thereto have been withdrawn.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 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
08/07/26
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