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 .
Claims 1-2, 8, 11, 16, 20, 22, 24-25, 28-29, 31, 41, 44-50 are pending. Claims 24-25, 28-29, 49 is currently amended. Claim 50 is newly added.
Claims 1-2, 5, 8, 11, 16, 20, 22-23, 28-29, 44-49 are rejected under 35 U.S.C. 103 as being unpatentable over Solomon in view Zok in view of Wang et al in view of Esche Jr et al.
Claims 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Solomon in view Zok in view of Wang et al in view of Esche Jr et al in view of Meyer.
Claim Rejections - 35 USC § 103
Claims 1-2, 5, 8, 11, 16, 20, 22-23, 28-29, 44-50 are rejected under 35 U.S.C. 103 as being unpatentable over Solomon (US Patent Application 2018/0079977 (already of record)) in view Zok (DE3511760 (already of record)) in view of Wang et al (US Patent 10,125,306 (already of record)) in view of Esche Jr et al (US Patent 6,599,865 (already of record)).
Regarding claims 1-2, 5, 8, 11, 16, 20, 22-23, 28-29, 44-50, Solomon teaches a deposition reducing composition for crude oil (which satisfies claimed deposition inhibiting) (Abstract) comprising 0.1-20wt% of a corrosion inhibitor including an imidazoline compound (Paragraphs 38-46), 0.1-0wt% of an asphaltene inhibitor such as polyolefin esters and polyisobutylene succinic anhydride (Paragraph 59), 0.1-20wt% of a scale inhibitor such as a phosphate ester (Paragraph 61) and about 1-80wt% of an organic solvent such as xylene (Paragraph 37). Solomon further teaches imidazolines:
PNG
media_image1.png
665
418
media_image1.png
Greyscale
However, Solomon fails to specifically disclose a mixture of a monoalkyl phosphate ester and dialkyl phosphate ester, polyisobutylene succinic ester and a sulfurized olefin.
In the same field of endeavor, Zok teaches a composition for prevention of deposits for oil (Paragraphs 37, 40) comprising phosphate ester having the formula
PNG
media_image2.png
98
457
media_image2.png
Greyscale
s=0-3, r,t=0-2, r+t=3, m=1-15
wherein R is up to 22 carbon atoms, wherein the phosphate esters can be mixtures of monoester and diesters (Paragraphs 39-40, 64).
In the same field of endeavor, Wang et al teaches an asphaltene inhibiting agent in an oil which is a reaction product of a polyisobutylene succinic anhydride and a polyol such as pentaerythritol (Col. 3, Line 8-Col. 4, Line 23).
In the same field of endeavor, Esche Jr et al teaches a improving the antioxidancy or deposition formation properties of oil compositions comprising a sulfurized olefin, including C4-C24 alpha-olefins (which satisfies claimed sulfurized 1-decene) (Col. 4, Lines 40-60).
With regard to a mixture of a monoalkyl phosphate ester and dialkyl phosphate ester, it would have been obvious to one of ordinary skill in art before the effective filing date of the claimed invention to have provided a mixture of monoalkyl phosphate ester and dialkyl phosphate ester in Solomon in view of Zok in order to provide a component that prevents deposits in oil; wherein Solomon already encompasses the incorporation of phosphate ester scale inhibitors. It is well settled that it is prima facie obvious to combine ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
With regard to polyisobutylene succinic ester, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the polyisobutylene succinic ester in Solomon in view of Wang et al in order to provide the claimed asphaltene inhibiting properties wherein the broad teachings of Solomon encompass asphaltene inhibitors including polyolefin esters and polyisobutylene succinic anhydride. Simple substitution of one known asphaltene inhibitor for another would provide the predictable results of inhibiting asphaltene.
With regard to a sulfurized olefin, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a sulfurized olefin in Solomon in view of Esche Jr et al in order to provide antioxidancy or deposit formation properties. It is well settled that it is prima facie obvious to combine ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Claims 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Solomon (US Patent Application 2018/0079977 (already of record)) in view Zok (DE3511760 (already of record)) in view of Wang et al (US Patent 10,125,306 (already of record)) in view of Esche Jr et al (US Patent 6,599,865 (already of record)) as applied to claims 1-2, 5, 8, 11, 16, 20, 22-23, 28-29, 44-49 above, and in further view of Meyer (US Patent 7,057,050 (already of record)).
Regarding claims 23-25, Solomon, Zok, Wang et al and Esche Jr et al disclose the invention substantially as claimed. Solomon, Zok, Wang et al and Esche Jr et al teach the features above. However, Solomon, Zok, Wang et al and Esche Jr et al fails to specifically disclose the imidazoline corrosion inhibitor in the instant claims.
In the same field of endeavor, Meyer teaches imidazoline corrosion inhibitors of the formula
PNG
media_image3.png
220
409
media_image3.png
Greyscale
for oil and oilfield applications (Abstract, Col. 2, Lines 1-15, Col. 2, Lines 63-Col. 3, Lines 18)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the imidazoline corrosion inhibitor of Meyer in Solomon, Zok, Wang et al and Esche Jr et al in order to provide corrosion inhibiting properties in oil and the broad teachings of Solomon already encompass an imidazoline corrosion inhibitor in the composition. Simple substitution of one known imidazoline corrosion inhibitor for another would achieve the predictable results of inhibiting corrosion.
Response to Arguments
Applicant's arguments filed May 5, 2026 have been fully considered but they are not persuasive.
With respect the obviousness rejection over Solomon in view of Zok in view of Wang et al in view of Esche Jr et al, Applicant argues that Solomon teaches away from using complex polymers in composition. The Examiner respectfully disagrees with the above argument because Solomon specifically recites compounds of formula (I) are used to reduce paraffin or wax deposition and can be combined with polyolefin esters or asphaltene inhibitors including polyisobutylene succinic anhydride (Paragraph 59). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). With respect to paragraph 6 of Solomon, this is only in the Background of the Invention. With respect to paragraph 12, Solomon teaches that usually wax inhibitors are polymers but polymers can be difficult to formulate and deploy, thus fatty alcohols or esters are provided that can be used in a method for reducing paraffin or wax deposition (Formula I), and can be combined with 0.1-10wt% of asphaltene inhibitors including polyolefin esters or polyisobutylene succinic anhydride (Paragraph 59).
Applicant further argues hindsight. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant further argues that the prior art reference lists a multitude of optional components and there would have been no reason for a person of ordinary skill in the art to select the specific combination of components in the instant claims. The Examiner respectfully disagrees with the above argument because the obviousness rejection is over Solomon in view of Zok in view of Wang et al in view of Esche Jr et al. With regard to a mixture of a monoalkyl phosphate ester and dialkyl phosphate ester, it would have been obvious to one of ordinary skill in art before the effective filing date of the claimed invention to have provided a mixture of monoalkyl phosphate ester and dialkyl phosphate ester in Solomon in view of Zok in order to provide a component that prevents deposits in oil; wherein Solomon already encompasses the incorporation of phosphate ester scale inhibitors. It is well settled that it is prima facie obvious to combine ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). With regard to polyisobutylene succinic ester, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the polyisobutylene succinic ester in Solomon in view of Wang et al in order to provide the claimed asphaltene inhibiting properties wherein the broad teachings of Solomon encompass asphaltene inhibitors including polyolefin esters and polyisobutylene succinic anhydride. Simple substitution of one known asphaltene inhibitor for another would provide the predictable results of inhibiting asphaltene. With regard to a sulfurized olefin, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a sulfurized olefin in Solomon in view of Esche Jr et al in order to provide antioxidancy or deposit formation properties. It is well settled that it is prima facie obvious to combine ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Applicant further argues that the four references are not directed to the same purpose. The Examiner disagrees with the above argument because all four references are directed to compositions/method for inhibiting precipitation or deposits in oil.
Applicant further argues that the cited references address different problems and employ different formulation approaches and there is no evidence that combining the claimed components would produce a composition for crude oil deposition inhibition. The Examiner respectfully disagrees with the above argument as recited above, all four references are directed to compositions/methods for inhibiting precipitation or deposits in oil. Solomon, the primary references already teaches a composition comprising 0.1-20wt% of a corrosion inhibitor including an imidazoline compound having the same formula as the instant claims (Paragraphs 38-46), 0.1-0wt% of an asphaltene inhibitor such as polyolefin esters and polyisobutylene succinic anhydride (Paragraph 59), 0.1-20wt% of a scale inhibitor such as a phosphate ester (Paragraph 61) and about 1-80wt% of an organic solvent such as xylene (Paragraph 37). Zok et al teaches a phosphate ester for prevention or deposits in oil having the claimed formula. Wang et al teaches inhibiting asphaltene precipitation or deposits in oil, wherein the asphaltene inhibiting agent is a reaction product of polyisobutylene succinic anhydride and a polyol such as pentaerythritol. Esche Jr et al teaches a improving the antioxidancy or deposition formation properties of oil compositions comprising a sulfurized olefin, including C4-C24 alpha-olefins. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
With respect to claim 50 reciting “consisting essentially of”, the “consisting essentially of” language does not necessarily exclude the additional components taught in the prior art because “consisting essentially of” renders the composition open to the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition, see Exparte Davis et al. (Bd of Appeals), 80 USPQ 448. Applicants have not submitted factual evidence showing that the additional components taught in the prior art materially affects the instant invention; conclusory statements not supported by factual evidence, see In re Lindner, 457 F.2d 506, 173 USPQ 356 (CCPA 1972). The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255. See MPEP 2111.03.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. 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.
/TANISHA DIGGS/Primary Examiner, Art Unit 1761 July 9, 2026
Prosecution Insights