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 1-16, in the reply filed on 06/08/2026 is acknowledged.
Claim Objections
Claims 1-4, 6-8, and 14-16 are objected to because of the following informalities: The claims recite the term “about”, however, the exactitude is not claimed, but rather a contemplated variation. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: It appears that claim 11 is invoking a Markush Group, therefore, it should be amended as follow: ‘the inert filler material is at least one selected from the group consisting of. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: It appears that claim 12 is invoking a Markush Group, therefore, it should be amended as follow: ‘the inert filler material is selected from the group consisting of . 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.
Claims 5, 15 and 16 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 6 recites “…not less than 5% by weight…,Claim 15 recites “..at least 30% by weight..” and claim 16 recites “… at least 12% by weight”… These are ranges with unbounded upper limit, and , as such, it is unclear as to the extent of the above material concentration of Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
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.
Claims 1- 16 are rejected under 35 U.S.C. 103 as being unpatentable over Shulman (US 5,580,378 A) ("Shulman" herein)
Claim 1
Shulman discloses a pumpable composite cement slurry comprising:
cementitious material that forms calcium silicate hydrates upon exposure to water; (Col. 2 l. 1-9, 64+ & Col. 3 l. 1-42)
inert filler material; (Col. 2 l. 14-63)
nano-sized calcium carbonate particles; (Col. 8 I. 47) and water, (Col. 1 I. 61+) wherein the cementitious material (Col. 2 l. 1-9, 64+ & Col. 3 l. 1-42)
the inert filler material has particle sizes of at least about 25 microns and no more than about 2 millimeters (mm), (Col. 2 l. 14-63) and
the slurry has a density of at least about 9.5 pounds per gallon (ppg) and no more than about 12.5 ppg. (Col. 4 l. 19-22)
Shulman discloses the claimed invention except for the cementitious material has a mean particle size of at least about 0.5 micron and no more than about 20 microns. It would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention to have the cementitious material has a mean particle size of at least about 0.5 micron and no more than about 20 microns, since it has been held that [W]here the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Since Shulmal discloses the same composition comprising a cementitious material, water, calcium carbonate, and inert filler materials, it would be a pumpable cement slurry wherein the cement material would that forms calcium silicate hydrates upon exposure to water.
"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 (I), 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 Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 2
Shulman discloses the slurry of claim 1, wherein the density of the slurry is greater than about 10.5 ppg and no more than 12 ppg. (Col. 4 l. 19-22)
Claim 3
Since Shuman discloses the same composition comprising a cementitious material, water, calcium carbonate, and inert filler materials, it would have a solid volume fraction of the slurry is greater than about 50%.
"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 Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934)
Claim 4
Shulman discloses the slurry of claim 1. Shulman however does not explicitly disclose, wherein the mean particle size of the cementitious material is at least about 1 micron and no more about 10 microns. (Same as claim 1)
Claim 5 .
Shulman discloses the slurry of claim 4, wherein the cementitious material comprises at least one of Portland cement, blast furnace slag, fly ash, or a combination thereof. (Col. 2 l.1-9, 64+ & Col. 3 I. 1-42)
Claim 6
Shulman discloses the slurry of claim 1, further comprising: silica material present at a concentration not less than 5% by weight, calculated to a total weight of the slurry. (Col. 3 I. 65+ ; Col. 4 l. 1-2 ; & Col. 5 l. 32)
Claim 7
Shulman discloses the slurry of claim 1, wherein particles sizes of the inert filler material are at least about 50 microns and no more than about 1 mm. (Col. 2 l. 14-63)
Claim 8
Since Shuman discloses the same composition comprising inert filler materials particles, it would have a specific gravity between about 0.8 g/cc to about 1.5 g/cc.
"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 Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934 )
Claim 9
Shulman discloses the slurry of claim 7, wherein the inert filler material comprises at least one of one or more rigid inert filler particles, one or more flexible inert filler particles, or a combination thereof. (Col. 2 l. 14-63)
Claim 10
Shulman discloses the slurry of claim 9, wherein the one or more rigid inert filler particles comprise plastic-based or polymer-based particles or beads and the one or more flexible inert filler particles comprise flexible elastomeric particles. (Col. 2 l. 14-63)
Claim 11
Shulman discloses the slurry of claim 8, wherein the inert filler material is at least one selected from:
at least one elastomeric-based material: a material based on grounded rubber; polystyrene or polystyrene copolymer; a recycled plastic material; grounded nut shells or grounded corn cob; and a combination thereof. (Col. 2 l. 14-63)
Claim 12 .
Shulman discloses the slurry of claim 11, wherein the inert filler material is selected from a material based on grounded rubber, polystyrene or polystyrene copolymer, or a combination thereof. (Col. 2 l. 14-63)
Claim 13
Shulman discloses the claimed invention except for of the nano-sized calcium carbonate particles are at least about 10 nm and no more than about 100 nm. It would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention to have of the nano-sized calcium carbonate particles are at least about 10 nm and no more than about 100 nm., since it has been held that [W]here the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 14
Shulman discloses the slurry of claim 13, wherein the nano-sized calcium carbonate particles are present in the slurry at a concentration of at least about 0.1% by weight to about 2% by weight, calculated to a total weight of the slurry. (Col. 8 I. 47)
Claim 15
Shulman discloses the slurry of claim 1, wherein the inert filler material is present in the slurry at a concentration of at least 30% by weight, calculated to a total weight of the slurry. (Col. 2 I. 14-63; Col. 5 l. 33) .
Claim 16
Shulman discloses the slurry of claim 1, wherein the cementitious material is present in the slurry at a concentration of at least 12% by weight, calculated to the total weight of the slurry. (Col. 2 l. 1-9, 64+ & Col. 3 l. 1-42; Col. 5 l. 28-30)
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Patil et al. (US 2011/0048709 A1) ("Patil" herein).
Claim 1
Patil discloses a pumpable composite cement slurry comprising:
cementitious material [0014]
inert filler material; [0021-0024]
nano-sized calcium carbonate particles; [0016] and
water, [0015]
wherein the cementitious material has a mean particle size of at least about 0.5 micron and no more than about 20 microns, [0014],
the inert filler material has particle sizes of at least about 25 microns and no more than about 2 millimeters (mm), [0021-0024, 0040] and
the slurry has a density of at least about 9.5 pounds per gallon (ppg) and no more than about 12.5 ppg. [0013]
Patil discloses the claimed invention except for the cementitious material has a mean particle size of at least about 0.5 micron and no more than about 20 microns. It would have been obvious to one having ordinary skill in the art before the effective filling .date of the claimed invention to have the cementitious material has a mean particle size of at least about 0.5 micron and no more than about 20 microns, since it has been held that [W]here the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Since Patil discloses the same composition comprising a cementitious material, water, calcium carbonate, and inert filler materials, it would be a pumpable cement slurry wherein the cement material would that forms calcium silicate hydrates upon exposure to water.
"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 (I), 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 Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 2
Patil discloses the slurry of claim 1, wherein the density of the slurry is greater than about 10.5 ppg and no more than 12 ppg. [0013]
Claim 3 .
Since Patil disclose the same composition comprising a cementitious material, water, calcium carbonate, and inert filler materials, it would have a solid volume fraction of the slurry is greater than about 50%.
"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 Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934)
Claim 4
Patil discloses the slurry of claim 1. Patil however does not explicitly disclose, wherein the mean particle size of the cementitious material is at least about 1 micron and no more about 10 microns. (Same as claim 1)
Claim 5
Patil discloses the slurry of claim 4, wherein the cementitious material comprises at least one of Portland cement, blast furnace slag, fly ash, or a combination thereof. [0014]
Claim 6 .
Patil discloses the slurry of claim 1, further comprising: silica material present at a concentration, calculated to a total weight of the slurry. [0026]
Patil discloses the claimed invention except for the silica material present at a concentration not less than 5% by weight, It would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention to have silica material present at a concentration not less than 5% by weight, since it has been held that [W]here the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 7
Patil discloses the slurry of claim 1, wherein particles sizes of the inert filler material are at least about 50 microns and no more than about 1 mm.[0040]
Claim 8
Since Patil discloses the same composition comprising inert filler materials particles, it would have a specific gravity between about 0.8 g/cc to about 1.5 g/cc.
"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 Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 9
Patil discloses the slurry of claim 7, wherein the inert filler material comprises at least one of one or more rigid inert filler particles, one or more flexible inert filler particles, or a combination thereof. [0021-0024]
Claim 10
Patil discloses the slurry of claim 9, wherein the one or more rigid inert filler particles comprise plastic-based or polymer-based particles or beads and the one or more flexible inert filler particles comprise flexible elastomeric particles. [0021-0024]
Claim 11
Patil discloses the slurry of claim 8, wherein the inert filler material is at least one selected from:
at least one elastomeric-based material: a material based on grounded rubber; polystyrene or polystyrene copolymer; a recycled plastic material; grounded nut shells or grounded corn cob; and a combination thereof. [0021-0024]
Claim 12
Patil discloses the slurry of claim 11, wherein the inert filler material is selected from a material based on grounded rubber, polystyrene or polystyrene copolymer, or a combination thereof. [0021-0024]
Claim 13
Patil discloses the claimed invention except for of the nano-sized calcium carbonate particles are at least about 10 nm and no more than about 100 nm. It would have been obvious to one having ordinary skill in the art before the effective filling date of the claimed invention to have of the nano-sized calcium carbonate particles are at least about 10 nm and no more than about 100 nm., since it has been held that [W]here the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 14
Patil discloses the slurry of claim 13, wherein the nano-sized calcium carbonate particles are present in the slurry at a concentration of at least about 0.1% by weight to about 2% by weight, calculated to a total weight of the slurry. [0020]
Claim 15
Patil discloses the slurry of claim 1, wherein the inert filler material is present in the slurry at a concentration of at least 30% by weight, calculated to a total weight of the slurry. [0021-0024] .
Claim 16
Patil discloses the slurry of claim 1, wherein the cementitious material is present in the slurry at a concentration of at least 12% by weight, calculated to the total weight of the slurry. [0020]
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lafitte et al. (US 2013/0274149) LUIDS AND METHODS INCLUDING NANOCELLULOSE teaches Treatment fluids and methods for treating a subterranean formation are disclosed that include introducing a treatment fluid into a subterranean formation, the treatment fluid containing a nanocrystalline cellulose, Lopez et al. (US 2008/0202752 A1) Cement Mix Used In Cementitious Slurry For Cementing Oil Well, Contains Hydraulically Active Cementitious Material, Alkali Metasilicate And/or Alkali Silicate, Calcined Kaolin Or Meta Kaolin, And Silica Fume Or Micro Silica Quartz teaches cement mix contains hydraulically active cementitious material, 0.1-8 wt.% of alkali metasilicate and/or alkali silicate, 2-10 wt.% of calcined kaolin or meta kaolin, and 0.5-55 wt.% of silica fume or micro silica quartz, by weight of cementitious material, and Garrison et al. (US 2015/0284620) Method Of Creating A Composite Cement With Enhanced Properties For Use In Oil And Gas Walls teaches This invention relates to using a unique blend of components of a composite cement and subjecting them to a rotary mill process using variably sized and shaped media to reduce the blends particle size. The invention is novel in that it mills the blended materials together to achieve reduced particle size, increased particle surface area, higher compressive strength and lower permeability. In one embodiment, the invention combines fly ash or other pozzolan material with a cement of any type at varying rations between 1% and 99%.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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/SILVANA C RUNYAN/ Primary Examiner, Art Unit 1616 07/20/2026
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