DETAILED ACTION
Election of Species
Applicant’s election of 08 February 2023 without traverse is again acknowledged:
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Election of 15 December 2025
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Pending Claim Tree
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Continuity Data Map
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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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 on 28 July 2025 has been entered.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1,2,8,11,21-25,27-29 and 33-36 are rejected under 35 U.S.C. 112(a), as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The enablement requirement refers to the requirement of 35 U.S.C. 112(a) that the specification describe how to make and how to use the invention. The invention that one skilled in the art must be enabled to make and use is that defined by the claim(s) of the particular application or patent.
The purpose of the requirement that the specification describe the invention in such terms that one skilled in the art can make and use the claimed invention is to ensure that the invention is communicated to the interested public in a meaningful way. A patent claim is invalid if it is not supported by an enabling disclosure.
Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. The standard for determining whether the specification meets the enablement requirement is whether the experimentation needed to practice the invention is undue or unreasonable? The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Consideration of the Wands Factors
(A) The breadth of the claims
The breadth of the claims in this application HAD been clarified by the amendments to the preambles of 21 OCTOBER 2024. The preamble of independent claims 1, now, disjunctively calls out “A method of treating an oil or gas fluid stream”. The preamble of independent claims 21 and 29 both call out “A treatment method”, disjunctively calling out “a first source of a first untreated oil or gas fluid” in claim 21, and “at least one oil or gas input stream” in claim 29.
Applicant elected a gas without traverse.
The language appearing in the body of the claims, at least “extracting”, is specific to liquids; inconsistent with the treatment of a gas, as one skilled in the art would know. Once again, it is unclear what claim scope Applicant seeks.
(B) The nature of the invention
The disclosure appears to span both mechanical and chemical technology in nature. Independent claims 1,21 and 29 claim extraction steps. Applicant’s specification suggests the invention is applicable to, “[0002] Petroleum producers, refiners, and gas processors (including onshore and offshore), and chemical manufacturers” and “the separation system100 equipped in this way can be applied to both contaminant removal (e.g. - caustic, dissolved acids, salts, acid gases or reaction byproducts) as well as recovery of valuable products or solvents (e.g. - recover soluble amines from treated LPG).”
Complex systems of the type expressly mentioned by Applicant require not only specification of physical process conditions, but also, the chemical make-up of the process streams that will potentially undergo complex (and perhaps undesirable) chemical interaction. Applicant’s scant disclosure, with claims of unclear scope weigh against a finding of enablement with respect to this Wands factor.
(C) The state of the prior art
The state of the prior art is unclear. Applicant’s specification refers to a multitude of trademarked and/or PROPRIETARY technology some of which is excerpted below. The Examiner is not privy to the workings of this technology, and what aspects of it are necessary to make, use and/or practice the invention. The Examiner is not privy to, or aware of any specific teachings that these terms imply, or are associated.
It is unclear if the numerous trademarked and/or PROPRIETARY technologies Applicant discusses in the Specification constitute “prior art,” or if Applicant intends these discussed technologies to constitute Applicant’s invention. A patent is a quid pro quo: In exchange for: – The right to exclude others from making, using, importing, or selling your invention for a limited time period; a limited monopoly. You must fully disclose your invention so the public can benefit from it and expand on it. The potential reliance on PROPRIETARY technology is not seen to comport with the disclosure requirement of the quid pro quo.
If Applicant intended these Specification recitations (e.g., excerpted below) to constitute an “incorporation by reference” which the Examiner does not find, Applicant is reminded that "Essential material" may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference.
(D) The level of one of ordinary skill
One of ordinary skill in the art would have at least some knowledge of mechanical and chemical technology. However, one skilled in the art would be unable to arrive at the claimed invention having Applicant’s disclosure before him, absent more detail, as to what the objective of invention is, the minimal physical structure of the system required to attain the objective, and the specific manipulative process steps necessary to attain the objective of the invention.
(E) The level of predictability in the art
The "predictability or lack thereof" in the art refers to the ability of one skilled in the art to extrapolate the disclosed or known, to arrive at, or result in the claimed invention. With the claims being drawn to chemical process limitations (e.g. “extraction”), the level of predictability is decreased as compared to a simpler mechanical separation as the previous unamended preamble of the claims misleadingly suggested. An increased level of UNpredictability weighs against a finding of enablement.
(F) The amount of direction provided by the inventor
The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art.
From Applicant’s Specification:
[0037] In some further embodiments of the invention, the at least one filter assembly 375 of the separation system 100 can include a compact Pentair polar extraction system. For example, in some embodiments, the primary vessel can include Pentair Porous Media's POLAREX® technology. In this instance, the separation system100 can provide chemical manufacturers, refiners and gas processors improved separation of entrained and dissolved contaminants relative to that achievable through implementation of conventional water wash or solvent scrubbing towers. Conventional approaches to washing or scrubbing are often limited by contact efficiency and subsequent separation efficiency, resulting in limited performance and large capital investments. The POLAREX® platform can include a single stage, high efficiency, structured contactor/separator within the separation system100, and can be applied to the extraction of soluble components from either liquid or gas process streams. Further, the separation system100 equipped in this way can be applied to both contaminant removal (e.g. - caustic, dissolved acids, salts, acid gases or reaction byproducts) as well as recovery of valuable products or solvents (e.g. - recover soluble amines from treated LPG) for as little as 20% of the capital associated with a conventional wash system. Further, when applied to batch chemical processes, the technology can increase process speed and operational flexibility. Traditional approaches to neutralization or product washing require a lengthy neutralization or wash step followed by decanting and transfer.
Not only do these steps slow reactor turn over, they also frequently result in carry-over of salts and impurities due to the limited separation effectiveness of decanting, particularly with emulsified product/water mixtures. By implementing the POLAREX® technology within the separation system100, neutralization or washing can proceed on-line during product transfer, allowing the wash/decant steps to be eliminated entirely.
[0038] In some other embodiments of the invention, the at least one filter assembly 375 of the separation system 100 can include a process technology comprising a LIQUISEP® technology from Pentair, Inc. This technology was developed to address the inherent deficiencies of conventional coalescers, making it possible to remove essentially all immiscible water dispersions from hydrocarbon process streams. The LIQUISEP® technology overcomes the limitations of conventional separators, vane pack coalescers, wire mesh coalescers and even "high efficiency" mesh pads and filter separators, achieving superior separations under demanding conditions.
LIQUISEP technology makes use of proprietary LIQUIFORMTM media and an APEX® element design to intercept entrained droplets of even submicron geometries and effectively remove them from the process. The high surface energy LIQUIFORMTM media effectively disrupts the stabilized water droplets, allowing for efficient capture. Additionally, the fiber geometries are specifically designed to promote accumulation and removal of free water from the process stream.
The APEX® element design works in concert with the media technology promoting uniform fluid flow, while minimizing the potential for turbulence and high fluid velocities which might interfere with water removal from the process stream. LIQUISEP® technology protects critical assets from water contamination and the salts, acids and bases which it may contain. Application of the LIQUISEP® technology allows optimized performance of downstream treaters, salt beds, exchangers and reactors while assuring the elimination of haze from finished products.
[0039] In some further embodiments of the invention, the at least one filter assembly375 of the separation system100 that can include a process technology comprising a ProcessOR® process technology from Pentair, Inc. ProcessOR® provides high performance solid-liquid separation for solid contaminants ranging from sub-micron particulates as small as viruses to particles several hundred microns in size. In this instance, the liquids can range from aqueous to hydrocarbon systems with viscosities up to 60,000 cP, and can be applied to the oil and gas, refinery, chemical, petrochemical and power industries. In another embodiment, a Pentair COMPAX® coreless element can be included, and fluid flows from the outside-to-the-inside. This technology can include an extended surface area media configuration utilizing our proprietary NexCel® media. The media provides robust performance in glycol and aqueous service as well as hydrocarbon applications in some embodiments.
[0040] HRT®, POLAREX®, LIQUISEP®, LIQUIFORMTM, APEX®, ProcessOR®, COMPAX®, and NexCel® are registered trademarks of Pentair, LTD., or one of its global affiliates.
An adequate disclosure of Applicant’s invention requires details of how complex components which are not disclosed or properly incorporated by reference, are constructed and perform the claimed desired functions/steps. Applicant cannot rely upon very general descriptions of possibly commercially available and/or PROPRIETARY technology to comply with the statutory requirement of 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.
From Applicant’s Specification:
[0037] In some further embodiments of the invention, the at least one filter assembly 375 of the separation system100 can include a compact Pentair polar extraction system. For example, in some embodiments, the primary vessel can include Pentair Porous Media's POLAREX® technology. In this instance, the separation system 100 can provide chemical manufacturers, refiners and gas processors improved separation of entrained and dissolved contaminants relative to that achievable through implementation of conventional water wash or solvent scrubbing towers. Conventional approaches to washing or scrubbing are often limited by contact efficiency and subsequent separation efficiency, resulting in limited performance and large capital investments. The POLAREX® platform can include a single stage, high efficiency, structured contactor/separator within the separation system100, and can be applied to the extraction of soluble components from either liquid or gas process streams. Further, the separation system100 equipped in this way can be applied to both contaminant removal (e.g. - caustic, dissolved acids, salts, acid gases or reaction byproducts) as well as recovery of valuable products or solvents (e.g. - recover soluble amines from treated LPG) for as little as 20% of the capital associated with a conventional wash system. Further, when applied to batch chemical processes, the technology can increase process speed and operational flexibility. Traditional approaches to neutralization or product washing require a lengthy neutralization or wash step followed by decanting and transfer.
Not only do these steps slow reactor turn over, they also frequently result in carry-over of salts and impurities due to the limited separation effectiveness of decanting, particularly with emulsified product/water mixtures. By implementing the POLAREX® technology within the separation system 100, neutralization or washing can proceed on-line during product transfer, allowing the wash/decant steps to be eliminated entirely.
It is unclear if “Pentair Porous Media's POLAREX® technology” as discussed at least in specification paragraph [0037] excerpted and reproduced immediately above, is necessary to “execute” the “polar extraction” of claim 1, “perform” the “polar extraction” of new independent claim 21, or “generate” “the at least one treated stream” as recited in new independent claim 29.
Or, can the “execution,” “performance,” or “generation” be accomplished with the “tradition approaches” or “conventional” systems (whatever they might be?) which Applicant asserts to be inferior? Applicant is reminded that "Essential material" may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. See 37 CFR 1.57 a copy of which is being made of record.
(G) The existence of working examples
There do not appear to be any working examples in the disclosure. This Wands factor weighs heavily against a finding of enablement.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Given the lack of clarity as to the breadth or scope of the claims, the manipulative steps involved and the objective as they relate to the elected “gas” species all as discussed above, no amount of experimentation could provide the requisite information necessary to assist one of ordinary skill in the art in arriving at how to make or use the invention based on the content of the instant, originally filed disclosure.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1,2,8,11,21-25,27-29 and 33-36 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
It is unclear what the recitations, what Applicant intends by “primary phase” and “secondary phase” in each of independent claims 1,21 and 29 and their dependencies. How do these “phases” relate to the elected “gas” species? How are these phases formed, or from where do they emanate?
It is unclear what is intended by “reaction products” as this language appears in the independent claims. From “reaction” of what?
It is unclear what is intended by “dissolved acids” as this language appears in the independent claims. It is unclear how a material becomes “dissolved” in the elected “gas” when, gas is NOT a liquid.
It is unclear how a “gas” undergoes the “extracting” step, a step which those skilled in the art would know, involves a liquid, not a gas, as this language appears in the independent claims.
In claim 1, it is unclear how the claimed “apertures” structurally/meaningfully differ from the claimed “ports” in the following clause, “a plurality of fluid apertures arranged to enable at least one fluid to enter or exit the internal volume of the primary process vessel, the plurality of fluid apertures including at least two fluid inlet ports and at least two fluid outlet ports”.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “apertures” as recited in claim 1, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Response to Arguments of October 21, 2024
Those rejections and/or objections no longer appearing in this or a previous Office Action were withdrawn in view of claim amendments and/or arguments presented. Applicant’s argument of October 21, 2024 have been carefully considered, and not found persuasive.
ENABLEMENT
Pages 10 through the top half of page 18 of the Remarks are devoted to the rejection under 35 USC Section 112(a) concerning enablement.
(A) The breadth of the claims
The “breath of the claims” is one of the factors that Wands dictates be considered when pondering enablement and compliance with 112(a). And, the Examiner did just that; in pondering the preamble in relation to the body of the claims, the Examiner considered what was previously recited, “A filtration method” to be unclear, since more than filtration appeared to recited in the claims. In this regard, an “extraction” of the type that the Examiner believes is intended, is not a “filtration” step as those skilled in the art would understand the meaning of these two terms. In challenging the Examiner’s statements with respect to this factor (where discussion of this factor also attempt to address 112(b) indefiniteness issues), Applicant amends the preamble to now call-out “treating” (claim 1) and “treatment” (independent claims 21 & 29), in lieu of “filtration”, and, apparently, without comment. In going from what was perhaps too narrow in “filtration” Applicant goes to what some might consider “too broad” in “treatment”. The Examiner finds the language of the Title and Specification most illuminating, in this instance. They both accurately describe/capture what appears to be claimed as a “Separation “System”, since both “filtration” and “extraction” are separation processes, which, in the case of method, would be referred to as, perhaps, a “Method of Separating”. Yet, broad language is usually the goal of most advocates, seeking patent protection. To this end, the Examiner has no opposition to the “treatment” language of the preamble, since both “filtration” and “extraction” are separation processes which are types of “treatment”, and, the claims employ the “open” transitional phrase “comprising” which does not exclude other type of “treatment”.
(B) The nature of the invention
Applicant asserts:
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Preliminarily, the recitation, “[and methods]” as asserted to appear at paragraph “[0003]” of the Specification, is not there, and is a mis-quote of “[0003]”. Next, Applicant nakedly asserts that “the nature of invention is generally more mechanical than chemical”. This conclusory argument is not well received. For example, the processing of “complex heterogeneous mixture[s]” of the type found in the “petroleum”, “chemical” and “petrochemical” is not “more mechanical that chemical” in nature. The nature of invention is indicated at least at Specification paragraphs, “[0002]”, “[0027]”, “[0037]” and “[0039]”. Processes of the type claimed are designed by those with a background in the chemical, not mechanical arts.
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Regarding the “commercially available technologies”, Applicant is reminded, that the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. The Examiner has NO IDEA to what the above referenced trademarked terms refer. It is unclear where in the record, references detailing such trademarked terms and/or commercially available technologies can be found. There appears to be no disclosure whatsoever of the discussed “POLAREX®” platform/technology that “implementation” of which, constitutes an asserted(?) improvement over “conventional approaches”.
Moreover, Applicant’s statement, that “these commercially available technologies are not intended to be incorporated by reference”, appears to be inconsistent with the express teachings of Applicant’s Specification, which states:
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It is unclear how one of ordinary skill in the art would be capable of practicing the claimed process, without a knowledge the discussed “POLAREX®” platform/technology. Clearly, “implementation” of this platform/technology is the “improvement” over “conventional approaches” as discussed in paragraph “[0037]”
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(C) The state of the prior art
The Examiner questioned the reliance on PROPRIETRARY technology. Remarkably, Applicant does not even mention PROPRIETARY, nor individually address this Wands factor, instead, “lumping” it in with TWO other factors:
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Applicant’s failure to even mention PROPRIETARY technology is seen to constitute acquiescence that Applicant relies on PROPRIETARY technology NOT disclosed.
(D) The level of one of ordinary skill
Again, Applicant does not even individually address this Wands factor, instead, “lumping” it in with TWO other factors as discussed above.
(E) The level of predictability in the art
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Unfortunately, Applicant relies on the “more mechanical than chemical” argument made against the Second Wands Factor above which was not found persuasive. Again, the processing of “complex heterogeneous mixture[s]” of the type found in the “petroleum”, “chemical” and “petrochemical” is NOT “more mechanical that chemical” in nature. The nature of invention is indicated at least at Specification paragraphs, “[0002]”, “[0027]”, “[0037]” and “[0039]”. Processes of the type claimed are designed by those with a background in the chemical, not mechanical arts. Figures 6-9 do not show the internal guts of the system or flowpaths of streams. They raise questions, and do not provide enabling disclosure.
(G) The existence of working examples
As noted by the Examiner, there do not appear to be any working examples in the disclosure. This Wands factor weighs heavily against a finding of enablement.
Responsively, with respect to the Applicant enumerated SEVENTH Factor, Applicant asserts:
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Unfortunately, Applicant has NOT established that “all the other factors point toward enablement”. In this regard, Applicant has not clearly established that any of the other Wands Factors “point toward” enablement. Accordingly, this argument is not found persuasive in establishing enablement.
Remarkably, Applicant makes only FIVE bodies of argument in response to the EIGHT Wands Factors individually considered by the Examiner. Not only does the failure to individually address each of the EIGHT Wands Factors make it difficult for the Examiner to analyze, appreciate and respond to any arguments or assertions made with respect to each individual factor, but it makes it difficult for interested third parties that may potentially, subsequentially, review/study the record, to appreciate Applicant’s positions.
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Response to Arguments of 28 July 2025
Regarding “Breadth”, the analysis in the rejection repeated above, states, “The breadth of the claims in this application has been clarified by the amendments to the preambles.”
In the “Breadth” analysis of 27 February 2026, The Examiner stated:
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Since the “breadth” of the claims was clarified to the point that the Examiner had “no opposition to the ‘treatment’ language of the preamble”, it is unclear why any additional amendments/arguments were made with respect to this factor.
Applicant’s argument that specifying “the chemical make-up of the process streams” weighs in favor of enablement. Applicant’s “specifying” has raised new issues as reflected in the rejections above. This argument is inconsistent with applicant’s previous arguments where the invention was asserted to be “more mechanical”.
The arguments pertaining to “state of the prior art and level of one of ordinary skill” are not found persuasive, minimally, because they are not commensurate with Applicant’s disjunctively claimed, elected species, ie., a “gas”.
With respect to “predictability,” Applicant argues “a disclosure of every operable species is not required. This is true. Unfortunately, the claims as amended are not enabled in view of the disclosure. A working example, of which there are none, may have helped.
The previous 112(b) rejections have been withdrawn in view of the amendments and/or arguments. The previous drawing objections are withdrawn in view of the arguments. The express language “fluid inlet port 450” and “fluid outlet port 430” should be added to the Specification.
The previous Examiner Response to Arguments is included above for completeness, and maintained where applicable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT JAMES POPOVICS whose telephone number is (571) 272-1164. The examiner can normally be reached 10:00 AM - 6:00 PM.
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, JENNIFER DIETERLE can be reached at (571) 270-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT J POPOVICS/ Primary Examiner
Art Unit 1776
Prosecution Insights