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 .
Drawings
Figure 1 is objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 108. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
In [0017], Applicant uses the acronym “EMA” without defining such. Applicant is advised to include the phraseology associated with the acronym “EMA” and placement of “EMA” in parentheses next to such prior to the use thereof, for example – eutectic metal alloys (EMA)-.
Appropriate correction is required.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification does not provide proper antecedent basis for the cement having a compressive strength ranging from 250 psi to 7,000 psi, as is recited in dependent claim
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 5 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 5 recites the limitation "the cement." There is insufficient antecedent basis for this limitation in the claim. The Examiner notes, independent claim 1, upon which claim 5 depends, recites “a cement composition” and “a cement precursor.” It is unclear if “the cement” of claim 5 is intended for the overall cement composition or the cement precursor and/or if such is associated with such before or after the cement has cured. Clarification is required.
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 (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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Amer et al. (US 2024/0059957).
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]).
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]).
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Pearl, Jr. et al. (US 2021/0222047).
With respect to independent claim 1, Pearl, Jr. et al. discloses a cement composition comprising: a cement precursor ([0011], wherein the metal material is incorporated into the cement; [0016]; [0019]; [0030], wherein the carrier fluid comprises uncured cement or cement slurry; [0033], wherein uncured cements are disclosed); and eutectic metal alloy particles ([0010]; [0022]; [0028]; [0034]).
With respect to dependent claims 2 and 3, Pearl, Jr. et al. discloses wherein the eutectic metal alloy particles comprise one or more selected from the group as claimed, and, further, wherein the particles comprise bismuth and tin ([0026]).
With respect to dependent claim 6, Pearl, Jr. et al. discloses wherein the cement composition further comprises an additive selected from the group as claimed ([0014]).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Amer et al..
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 treatment is further suggested to increase the pressure in the interval by at least 50 psi to 500 psi ([0019]). Although silent to wherein the cement composition has a compressive strength within the range as claimed, since the fluid loss treatment itself 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.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Pearl, Jr. et al..
With respect to dependent claim 4, Pearl, Jr. et al. discloses wherein the eutectic metal alloy particles are coated with a layer, wherein particles of the metal may have any suitable size and are suggested as incorporated so that they can bridge and fill pore spaces; example sizes are suggested to include particle diameters of 3 nm to 10 microns ([0011]). As can be seen in Figure 2, the metal alloy particles 210 are coated by layer 215. Although silent to the eutectic metal alloy particles as having an average particle size within the range as claimed, since Pearl, Jr. et al. suggests wherein the particles can have any suitable size and wherein such are incorporated within the cement so as to bridge and fill pore spaces, it would have been obvious to one having ordinary skill in the art to include particles having a size within the range as claimed as based on the pore spaces to be bridged and filled thereby 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 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 average particle size as critical and it is unclear if any unexpected results are achieved by using the instantly claimed concentration ranges. Since the particles of Pearl, Jr. et al. are provided so as to fill and bridge pore spaces within a cement composition so as to impart self-healing properties thereto it does not appear that such would be considered an unexpected result of using eutectic metal alloy particles having an average particle size as instantly claimed, and, as such, the determination of optimal average particle size therefor would be achievable through routine experimentation in the art.
With respect to dependent claim 5, Pearl, Jr. et al. discloses wherein the inclusion of the eutectic metal alloy particles in the wellbore fluid/cement composition lends a degree of strength to since the treatment fluid since the metal material can have a mechanical properties that are greater than the wellbore treatment material itself, and, further, wherein when the metal is incorporated into cement, it improves the mechanical properties thereof ([0011]). Although silent to the specific compressive strength achieved in the cement by inclusion of the eutectic metal alloy particles with the cement precursor, the incorporation thereof would be expected to increase the compressive strength so that such is within the range 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. If there is any difference between the compressive strength of the cement of Pearl, Jr. et al. and that of the instant claims, the difference would have been minor and obvious. 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). With further regard to the obviousness thereof, 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 Pearl, Jr. et al. improves the mechanical properties, including strength, when incorporated into a cement matrix, 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2018/0298715 discloses a plug formed from a combination of resin and bismuth based alloy.
SU 832062 A1 discloses a cement composition that is cured with eutectic metal alloy particles.
US 2018/0258735 discloses a cement composition that includes a cement precursor and solid pellets of a eutectic metal alloy.
US 2016/0237341 discloses a cement composition that includes eutectic metal particles therein.
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 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
04/18/26
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