DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 on17 July 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Amendment and Arguments
Applicant’s amendment does not distinguish from Ghosh in view of SAKANISHI.
Applicant’s arguments in light of the amendment has been fully considered but are not persuasive.
Applicant argues that Ghosh in view of SAKANISHI does not teach "a drag reducer composition for reducing drag resistance in a produced hydrocarbon fluid" and that "at least 50 wt. % of the oil-soluble polymer, the oil-miscible polymer, or the emulsifiable polymer dissolves in the produced hydrocarbon fluid” as amended.
The examiner notes when reading the preamble in the context of the entire claim, the recitation “a drag reducer” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The examiner further notes that “for reducing drag resistance in a produced hydrocarbon fluid” is interpreted as an intended use since there is no apparent structural difference required by the composition other than that recited in the body of the claim (see MPEP2111.02, II). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
As to the limitation “ at least 50 wt. % of the oil-soluble polymer, the oil-miscible polymer, or the emulsifiable polymer dissolves in the produced hydrocarbon fluid”, Ghosh teaches the same 2-ethylhexyl methacrylate-based polymer of the same molecular weight range, absent evidence to the contrary, one of ordinary skill in the art would have reasonable basis to expect that the claimed polymer solubility in produced hydrocarbon would naturally arise and be achieved by the poly (2-ethylhexyl methacrylate) of Ghosh. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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.
In response to applicant's argument that Ghosh is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Ghosh is pertinent to an aqueous emulsion comprising an oil-soluble polymer, an oil-miscible polymer, or an emulsifiable polymer, which the inventor was concerned .
Claim Rejections - 35 USC § 103
Claims 1, 4-5, 7, 8, 14, 30 and 47-51 stand rejected under 35 U.S.C. 103 as being unpatentable over Ghosh in view of SAKANISHI.
Regarding claims 1, 4-5, 7, 8, 14 and 47-49, Ghosh teaches an aqueous emulsion comprises emulsified copolymers derived from one or more one or more monoethylenically unsaturated monomers including 2-ethylhexyl(meth)acrylate ([0018], [0019] and [0026]), which meets the claimed formula (1) and polymer, and emulsion stabilizing agents such as a combination of anionic and nonionic dispersing agent/surfactant ([0026]), wherein the polymer may have a weight average molecular weight in the range 5,000-5,000,000 as measured by GPC([0035]), which overlaps with the claimed range.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the polymers of the instantly claimed molecular range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding the limitation “ at least 50 wt. % of the oil-soluble polymer, the oil-miscible polymer, or the emulsifiable polymer dissolves in the produced hydrocarbon fluid”, Ghosh teaches the same 2-ethylhexyl methacrylate-based polymer of the same molecular weight range, absent evidence to the contrary, one of ordinary skill in the art would have reasonable basis to expect that the claimed polymer solubility in produced hydrocarbon would naturally arise and be achieved by the poly (2-ethylhexyl methacrylate) of Ghosh. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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.
Ghosh further teaches that the anionic dispersing agent/surfactant comprises sodium octyl sulfosuccinate ([0027]), which meets the claimed surfactant additive thus HLB, and the nonionic dispersing agent/surfactant comprises polyoxyethylene ([0028]).
Ghosh does not disclose polyglycerol.
SAKANISHI teaches a polyglycerol alkyl ether exhibits superior emulsifying activity to those of polyalkylene oxide surfactant ([0004], [0006]- [0009] and [0014]), wherein the polyglycerol alkyl ether comprises branched aliphatic hydrocarbon chain and polyglycerol chain ([0009], [0011] and [0014]), and having a formula ([0011]):
RO-(-C3H6O2)n-H
which meets the claimed term of polyglycerol in light of the instant disclosure (Table 1); and wherein n is 2 to 10, R is exemplified as hexyldecyl ([0023] and [0067]), thus a molecular weight of 374 to 966, calculated by the examiner, which meets the claimed molecular weight.
SAKANISHI teaches that the polyglycerol alkyl ether can be used as emulsifiers for synthetic resins including acrylate polymers([0012] and [0047]), which provides superior emulsifying activity stably over time and temperature due to the presence of polyglycerol chain whose hydrophilicity hardly varies with temperature([0006],[0008] and [0014]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to replace the polyoxyethylene nonionic dispersing agent/surfactant of Ghosh with the polyglycerol alkyl ether of SAKANISHI. The rationale to do so would have been the motivation provided by the teachings of SAKANISHI that to do so would provide superior emulsifying activity stably over time and temperature ([0007] and [0014]).
The recitation “a drag reducer” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The recitation “for reducing drag resistance in a produced hydrocarbon fluid” is interpreted as an intended use since there is no apparent structural difference required by the composition other than that recited in the body of the claim (see MPEP2111.02, II). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 30, Ghosh exemplifies an emulsion comprising 1514.44 pounds of ethylhexylacrylate based polymer A (solid content of 45.6% )in 2628.82 pounds of emulsion ([0103], Table 3 and 5), which is equivalent to about 26 wt.% estimated by the examiner, i.e., 1514.44X45.6%/2628.82, which meets the claimed amount.
Regarding the viscosity and stability of claims 50 and 51, Ghosh and Sakanishi teach all of the claimed ingredients in the claimed amount, absent evidence to the contrary, one of ordinary skill in the art would have reasonable basis to expect that the claimed viscosity and storage stability would naturally arise and be achieved by a composition with all the claimed ingredients under similar storage conditions. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 15 stands rejected under 35 U.S.C. 103 as being unpatentable over Ghosh in view of SAKANISHI as applied to claims 1, 4-5, 7, 8, 14, 30 and 47-51 above, and further in view of Silvers.
The combined teachings of Ghosh and SAKANISHI are set forth above.
Ghosh further teaches the emulsion comprises buffers and amine stabilizers ([0050]).
Ghosh does not expressly disclose the presence of an trialkanol amine.
Silvers teaches that triethanolamine can stabilize acrylic latex emulsion by buffering the emulsion ([0029]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the triethanolamine of Silvers in the emulsion of Ghosh and SAKANISH. The rationale to do so would have been the motivation provided by the teachings of Silvers that to do so would predictably provide buffering of the emulsion to stabilize the emulsion ([0029]), and further since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, a buffering agent for acrylic emulsions. See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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