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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 on 10/24/2025 has been entered. Claims 1-17 and 25-27 are cancelled. Accordingly, claims 18-24 and 28-32 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner acknowledges receipt of the change to assignment from “TouGas Oilfield Solutions GmbH” to “TouGas Holding GmbH” in ADS filed 12/15/2025.
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 18-24 and 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Mertens et al (US 2004/0260017 A1) in view of Harrington et al (US 2005/0143506 A1) and by Klima et al (US 6,117,934).
Regarding claims 18 and 23, Mertens et al disclose water-in-oil dispersion (paragraph 0096). The method comprises preparing an aqueous solution of monomers including acrylic acid, acrylamide and 2-acrylamido-2-methylpropanesulfonate (i.e., reads on step (i) of preparation of aqueous monomer solution in present claim 18). The monomer solution includes sodium hydroxide (i.e., reads on adjusting pH of aqueous monomer solution and is implicit in the inclusion of sodium hydroxide). A solution of Hypermer® 1083 in Edenor® MESU and Shellsol® D40 (i.e., reads on step (ii) of preparation of an organic solution containing a water-immiscible liquid that does not interfere with polymerization reaction in present claim 18) was mixed into said mixture. The mixture was homogenized to yield a finely divided emulsion (i.e., reads on step (iii) of addition of an aqueous phase of step (i) to an organic phase of step (ii) to prepare a water-in-oil emulsion comprising monomer from step (i) in present claim 18). After degassing by perfusion with nitrogen (i.e., reads on step (iv) of removal of oxygen in present claim 18), diethyl-2-2’-azoisobutyrate were added and mixture heated to 600C. Polymerization began (i.e., reads on step (iv) of polymerization reaction by addition of one or more compounds that form radicals in present claim 18) and temperature was maintained between 600C to 1000C (i.e., reads on step (v) of adjusting temperature by heating in present claim 18) and water-in-oil polymer dispersion is obtained (paragraph 0093) which reads on conversion of monomers into a polymer in present claim 18 and comprising at least one polymer in aqueous phase and the aqueous phase is mixed with a continuous hydrophobic phase and droplets of the aqueous phase are stabilized by the surfactant package in present claim 18. The polymers contained in water-in-oil polymer dispersions are water-soluble (paragraph 0036) which reads on the water-soluble polymer in present claim 18. It is possible to prepare polymer dispersions whose product viscosity after activation is in the range of 100 to 1,000 mPa.s (paragraph 0022) which reads on viscosity of emulsion in present claim 18.
Mertens et al are silent with respect to addition of surfactant package having first surfactant having a HLB value of between 3 and 9, and second surfactant with a HLB value greater than 11; second surfactant is an alkyl polyglycoside which is dodecyl polyglucoside having 1 to 3 glucoside units; molecular weight of water-soluble polymer.
However, regarding addition of surfactant package having first surfactant having a HLB value of between 3 and 9, and second surfactant with a HLB value greater than 11, Mertens et al teach, in example 1, addition of a mixture of Glucopon® 225 DK and Marlipal® 013/30 to the water-in-oil dispersion (paragraph 0096). It is noted that Glucopon® 225 DK and Marlipal® 013/30 have HLB values of 13.6 and 8.0, respectively, and Glucopon® 225 is an alkyl polyglycosides (i.e., reads on the surfactant package in present claim 18; and second surfactant is an alkyl polyglycoside in present claim 18). Case law holds that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), See MPEP § 2144.04. Therefore, in light of the teachings in Mertens et al and case law, it would have been obvious to one skilled in art prior to the filing of present application, to include the surfactant package in the polymerization process, of Mertens et al, either before as in present claims or after polymerization, absent evidence to the contrary.
Regarding second surfactant is an alkyl polyglycoside which is dodecyl polyglucoside having 1 to 3 glucoside units, Klima provides evidence that Glucopon® 225 surfactant taught in Mertens et al, is an alkyl polyglycoside in which alkyl group contains 8 to 10 carbon atoms and has an average degree of polymerization of 1.7 (col. 4, lines 16-19) which reads on 1 to 3 glucoside units in present claim 18. It is noted that dodecyl polyglucoside is a homolog of alkyl polyglycoside having 10 carbon atoms (i.e., decyl polyglycoside). Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re May, 574 F.2d 1082, 1093-95, 197 USPQ 601, 610-11 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers). Therefore, in light of the teachings in Mertens et al, Klima et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to use a homolog, of the alkyl polyglycoside Glucopon® 225, having 12 carbon atoms in the alkyl chain of alkyl polyglucoside (i.e., dodecyl polyglycoside) in the process, of Mertens et al, before polymerization, absent evidence to the contrary.
Regarding molecular weight of water-soluble polymer, Harrington et al in the same field of endeavor teach that inverse polymerization is utilized on a commercial scale to produce high molecular weight water-compatible polymers (paragraph 0005). The advantages of this process include the ability to prepare high molecular weight water-compatible polymer in a low viscosity, high solids form and the polymer can have high molecular weight in the tens of millions (paragraph 0006) which reads on molecular weight of water-soluble polymer in present claims 18 and 23. Therefore, in light of the teachings in Harrington et al and given that water soluble polymer in Mertens et al is prepared by substantially similar process as in present claims, one skilled in art would have a reasonable basis to expect the water-soluble polymer, of Mertens to have a high molecular weight of greater than 1,000,000 and greater than 3,000,000, absent evidence to the contrary. Additionally, case laws holds that if there is no evidence in the record pointing to any critical significance in a claimed molecular weight then the claims are not patentable over the prior art. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Should applicant argue criticality of molecular weight, it will be noted that applicant’s examples do not indicate or suggest a critical molecular weight. Such data has little to no probative value.
Regrading claims 19 and 20, Mertens et al teach that water-in-oil dispersions contain 10 to 70% by weight of water-soluble polymers, 0.5 to 10 wt% of water-in-oil emulsifier and 20 to 80 wt% of organic phase, 0.01 to 2 wt% of a residual monomer scavenger, 0.5 to 10 wt% of inverter mixture and water to make up to 100 wt% (paragraphs 0029-0030) which overlaps with the amount of water-soluble polymer in aqueous phase of present claim 19; and amount of synthetic polymer in the present claim 20.
Regarding claims 21 and 22; Mertens et al teach that polymers are produced by adding monomers to the organic phase as a monomer solution consisting of water and suitable monomers. The aqueous monomer solution contains at least one polymerizable hydrophilic monomer. Examples of hydrophilic monomers include olefinically unsaturated carboxylic acids such as acrylic acid, olefinically unsaturated sulfonic acids such as AMPS, vinyl sulfonic acid, and derivatives of acrylic acid such as (meth)acrylamide. Therefore, in light of the teachings in general disclosure of Mertens et al, it would have been obvious to one skilled in art prior to the filing of present application to include any of the hydrophilic monomers such as (meth)acrylamide (i.e., reads on structural I in present claim 21) in combination with other monomers such as AMPS, vinyl sulfonic acid, and acrylic acid in equal amounts, absent evidence to the contrary.
Regarding claim 24, Klima provides evidence that Glucopon® 225 surfactant taught in Mertens et al, is an alkyl polyglycoside in which alkyl group contains 8 to 10 carbon atoms. It is noted that Glucopon® 225 surfactant having 8 to 10 carbon atoms with a degree of polymerization of 1.7 has a molecular weight of about 443 g/mol. Hence, it is the Office’s position that alkyl polyglycoside having 12 carbon atoms in the alkyl chain (i.e., dodecyl polyglucoside) would necessarily have a molecular weight of less than 950 g/mol (i.e., reads on present claim 24), absent evidence to the contrary.
Regarding claims 28, 29 and 30, see example 1, of Mertens et al, wherein a surfactant mixture comprising Glucopon® 225 DK and Marlipal® 013/30 is added to water-in-oil dispersion in amounts of 4.4% by weight (i.e., reads on amount of first and second surfactant in present claim 28). The Glucopon® 225 DK and Marlipal® 013/30 are mixed in a ratio of 1:1 (paragraph 0096) which reads on ratio of first and second surfactant in present claims 29 and 30; and amounts of first and second surfactant in present claim 30.
Regarding claim 31, see example 3, of Mertens et al, wherein the polymer is formed from a monomer mixture comprising acrylic acid, acrylamide and sodium 2-acrylamido-2-methylpropanesulfonate (paragraph 0098) which reads on copolymer in present claim 31.
Claims 21-22 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Mertens et al (US 2004/0260017 A1) in view of Harrington et al (US 2005/0143506 A1), Klima et al (US 6,117,934), and Engelhardt et al (US 2009/0192055 A1).
The discussion with respect to Mertens et al, Harrington et al, and Klima et al in paragraph 9 above is incorporated here by reference.
Mertens et al, Harrington et al and Klima et al fail to disclose in a single embodiment as in present claims a species of the water-soluble polymer.
However, Mertens et al in the general disclosure teach that polymers are produced using an aqueous monomer solution containing at least one polymerizable hydrophilic monomer and may include two or more monomers from the group consisting of hydrophilic monomers (paragraph 0037). Examples include acrylic acid, AMPS, acrylamide (paragraphs 0038-0041). Additionally, Engelhardt et al in the same field of endeavor teach an aqueous polymer composition comprising a water-soluble polymer (abstract). The copolymers are prepared preferably by inverse emulsion polymerization (paragraph 0029). See example 11, wherein the polymer comprises 60% by weight of acrylamide (i.e., reads on structural unit I in present claim 21 wherein R1, R2 and R3 = hydrogen, and its amount in present claims 21-22 and 32), 30% by weight of AMPS (i.e., reads on structural unit II in present claim 21 wherein R4 = H, A = two-valent organic bridging group and R5 = H; and its amount in present claims 21-22 and 32), 0.5% by weight of VPA (i.e., reads on structural unit V in present claim 21 wherein D is a covalent C-P bond, R18 and R19 = H; and its amount in present claims 21-22 and 32), and 9.5% by weight of vinyl formamide (i.e., reads on structural unit IV in present claim 21 wherein R12, R13, R14 = hydrogen and R15 = -COH; and its amount in present claims 21-22 ad 32). The ethylenically unsaturated carboxylic acid is preferably present in amounts of between 0 and 10% by weight (paragraph 0035 and 0040) and examples include acrylic acid (paragraph 0054) which reads on structural unit III in present claim 21 wherein R6, R7 and R8 = hydrogen and B is a covalent C-C bond; and overlaps with its amount in present claims 21-22 and 32. Therefore, in light of the teachings in Engelhardt et al, it would have been obvious to one skilled in art prior to the filing of present application to include any of the monomers in the polymerization process, of Mertens et al, including those in the exemplary embodiments, of Engehardt et al, in combination with acrylic acid, absent evidence to the contrary.
Response to Arguments
Arguments presented in Declaration under 37 CFR 1.132, filed 10/24/2025, have been fully considered but they are not persuasive. Specifically, applicant argues that (A) Mertens et al. disclose inverse mixtures containing certain materials for water-in-oil polymer dispersions; however, the claimed invention relates to water-in-oil polymer emulsions. The Patent Office takes the position that the terms "emulsion" and "dispersion" are used interchangeably in the art. Typically, the polymerization particles in dispersions are 0.1-15 µm, which is significantly larger than the particles obtained by emulsion polymerization, which are very small, typically 50-300 nm. In dispersion polymerization, the reaction occurs in a solvent in which the monomer is soluble, but the polymer is insoluble, and the polymer is stabilized by protective colloids or polymeric stabilizers; (B) Polymers obtained by inverse emulsion polymerization are high molecular weight, water-compatible, and exist in a low-viscosity, highly uniform form. Mertens et al. does not disclose a synthetic polymer having a minimum average molecular weight of more than 1,000,000 Dalton; (C) Data Sheet of Glucopon® 225 DK states that it is an aqueous solution of alkyl polyglucoside based on fatty alcohol C8-C10. Examples 6 and 7 in Table 1 of the present application are based on C10 alkyl (fatty alcohol C10) as required by the Data Sheet of Glucopon® 225 DK, and as shown in Table 2, the corresponding Examples 13 and 14 show 0d (no) stability while the inventive example 12 (C12) shows a stability for 71 days. This is unexpected results of the claimed invention. Exhibit A shows photographs of an emulsion with the linear ethoxylated isotridecyl alcohol (C8-Genapol X080) and G9-linear ethoxylated isotridecyl alcohohl (C9-Genapol X090). Separation of the oil phase starts directly after the polymerization. Isotridecyl alcohol (ITDA) is a high-purity branched C13 OXO alcohol. The Exhibit A photographs show that C13, which is even closer to C12, does not cause the high stability of the emulsion. Table 2 in the present application shows stability of 71 days for the claimed invention, while the Exhibit A photographs show that the C13 emulsion is not stable at all and separates directly after the polymerization.
With respect to (A), as stated earlier, Mertens et al discloses a method comprising preparing an aqueous solution of monomers to which is added an organic solution comprising surfactants. The mixture was homogenized to yield a finely divided EMULSION (paragraph 0098). The polymers obtained in the process are water-soluble. Hence, it is clear that polymerization is conducted in finely divided emulsion and results in formation of water- soluble polymer as in present claims. Additionally, note that claims filed during the prosecution recite “aqueous phase is dispersed in a continuous hydrophobic organic phase and droplets of the aqueous phase are stabilized by the surfactant package” (see for e.g., claims filed 3/1/2024). Given that an emulsion is formed in the process of Mertens and the polymer obtained is water-soluble; and PRESENT CLAIMS recited (in an amendment filed 3/1/2024) “aqueous phase is dispersed in a continuous hydrophobic organic phase”, it is the Office’s position that “emulsion” and “dispersion” are used interchangeably in the polymerization process of present application. Applicant’s attention is also drawn to Mertens, wherein it teaches that polymer particles preferably have a particle size of less than 1 micron (i.e., < 1000 nm) and includes size of 50 300 nm of an emulsion.
With respect to (B), Mertens et al teach the process of emulsion polymerization and use of surfactant package of present claims is obvious. Graham v. Deere analysis was done and the secondary reference of Harrington et al teach that inverse polymerization results in high molecular weight water compatible polymers in a low viscosity, high solid form and can have molecular weight in tens of millions.
With respect to (C), it is the Office’s position that surfactants used in comparative examples of present invention are not based on alkyl glucosides taught in Mertens and are therefore not a proper comparison. For a proper comparison, alkyl glucosides having 8 to 10 carbon atoms in the alkyl chain must be used in comparative examples.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764