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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-6, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Eaton (US 6,015,779) in view of Kostelnik (US 4,647,633).
Regarding claims 1 and 21, Eaton teaches alpha-olefin copolymers and specifically terpolymers (col. 2, line 62), wherein the alpha-olefin monomers have 2 to 20 carbon atoms (col. 9, lines 11-12).
Eaton teaches the incorporation of 1-octene (col. 3, line 5), which reads on the claimed “first alpha-olefin monomer having a carbon chain length of between 4 and 9 carbon atoms” because it contains eight carbon atoms.
Eaton teaches the incorporation of 1-tetradecene (col. 3, line 5), which reads on the claimed “second alpha-olefin monomer having a carbon chain length of between 12 and 15 carbon atoms” because it contains fourteen carbon atoms.
Eaton teaches the incorporation of 1-decene (col. 9, line 15), which reads on the claimed “third alpha-olefin monomer having a carbon chain length of between 10 and11 carbon atoms” because it contains ten carbon atoms. It would have been obvious to combine a third monomer with 1-octene and 1-tetradecene based on the suggestion to form terpolymers (col. 2, lines 60-62), and further obvious to select 1-decene from the list at col. 9 based on its art-recognized suitability for use as a comonomer in Eaton’s terpolymer. See MPEP 2144.07.
Eaton further teaches that the inventive materials are useful as drag reducing agents for hydrocarbons (col. 5, lines 7-13).
Eaton further teaches that the molecular weight of the invention is in excess of ten million (col. 2, lines 10-18), which reads on the claimed “molecular weight greater than 1 million g/mol.”
Eaton differs from claim 1 because it is silent with regard to the claimed compositional ranges of the three monomer components of the inventive terpolymers.
In the same field of endeavor, Kostelnik teaches a terpolymer (col. 3, lines 29-30) that is used as a drag reducing additive in hydrocarbon liquids flowing through a conduit (col. 2, lines 52-53). Kostelnik does not teach a lower-limit of each monomer within the composition, but does teach that any individual monomer should be preferably limited to at most 75 mole % based on the total number of moles of alpha-monoolefin monomer present in the reaction mixture (col. 3, lines 29-34). The amounts of each component of the terpolymer taught by Kostelnik therefore range from just above 0% to a maximum of 75%, which encompasses the claimed ranges for each of the claimed monomers, establishing prima facie cases of obviousness.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate Eaton’s monomers in amounts of up to 75 mol%, as Kostelnik demonstrates this to be a suitable range for compositionally similar alpha-olefin copolymers having similar utility. This encompasses the claimed ranges.
Eaton is silent with regard to the claimed dissolution rate. Nevertheless, Eaton as applied above results in a terpolymer that is structurally identical to the claimed terpolymer, which contains all of the same components in the same compositional amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed dissolution rates will therefore necessarily be present in Eaton as applied above.
Regarding claim 3, as described above, Kostelnik teaches that the amounts of each component of the terpolymer range from just above 0% to a maximum of 75%. The range taught by Kostelnik encompasses each of the claimed ranges, establishing a prima facie case of obviousness.
Regarding claims 4 and 22, Eaton teaches the use of 1-octene, 1-tetradecene, and 1-decene (col. 9, lines 13-18).
Regarding claims 5-6 and 23, Eaton is silent with regard to the claimed dissolution rates. Nevertheless, Eaton as applied above results in a terpolymer that is structurally identical to the claimed terpolymer, which contains all of the same components in the same compositional amounts. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed dissolution rates will therefore necessarily be present in Eaton as applied to claims 1, 4, and 21, above.
Response to Arguments
Applicant's arguments filed December 22, 2025 have been fully considered but they are not persuasive.
Applicant argues that Eaton only contemplates the use of terpolymers as monomers within the inventive composition, and not as products thereof. However, one having ordinary skill in the art would understand that polymers and monomers are distinct species; furthermore, Eaton teaches a polyalphaolefin product which is a polymer (Abstract), and the first citation of “terpolymer” within Eaton is reasonably interpreted as referring to the word “invention” within the same sentence, as opposed to referring to the word “monomers” (see Eaton col. 2, lines 60-63).
Moreover, assuming arguendo that the terpolymers within Eaton are solely referring to “monomers” which are terpolymeric, Eaton teaches the incorporation of all of the claimed monomers as suitable equivalents for the purpose of forming a polyalphaolefin-based drag reducing agent. Furthermore, it is prima facie obvious to select and combine materials known in the art as suitable for their art-recognized purpose (see MPEP 2144.06 and 2144.07). It therefore would have been obvious to one having ordinary skill in the art to combine these monomers into a drag reducing agent.
Applicant next argues that 13.3 % overlap between the claimed and prior art ranges “does not qualify as a significant portion.” This is tantamount to an argument of insufficient specificity regarding disclosed ranges. Firstly, the issue of sufficient specificity is a question relating to a basis of rejection based on anticipation, not based on obviousness as is the instant case. However, it has been held that a prior art genus containing only 20 compounds anticipated a single claimed species within the genus because “one skilled in [the] art would… envisage each member” of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (emphasis in original). See MPEP 2131.02 and 2144.08. The degree of overlap between Eaton’s range and the claimed range is greater than the degree of overlap in Petering (i.e., 13.3% is greater than 1-in-20), and one of ordinary skill in the art would clearly envisage each value falling within the claimed range based on the values disclosed by Eaton. Therefore, the prior art range is sufficient to read on the claimed range.
Applicant’s final argument states that not all possible combinations of Eaton and Kostelnik are suitable combinations; however, the presence of compositions within the prior art which do not meet the claimed compositional limitations do not rebut the presence of compositions which do. The prior art therefore reads on the claimed composition regardless of the additional incorporation of other formulations which are not claimed.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762