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 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.
Claims 1-7, 10-15, 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Volkov (RU 2332439) in view of Volkov (RU2220999).
Regarding claims 1-3, 5-7, and 12-15, Volkov ‘439 discloses an emulsion composition that produces N2 gas for wells and used in the petroleum industry (0001 and 0005). The composition includes sodium nitrite, ammonium chloride (0041), water, polyvinyl alcohol, and aliphatic alcohol (0020)(meets co-surfactant) and silica of brands aerosil and polysil (0028)(meets nanoparticle since that is the size of these commercial available products), and a hydrocarbon such as diesel (0054). The composition meets the claimed arrangement of reactants since they are mixed together. The times of reaction are method limitations and do not limit the composition since the composition disclosed by Volkov will possess the same reaction times. Further, the nitrite and chloride are capable of producing heat since they are the same reactants used by Applicant (see specification pg 5).
Volkov ‘439 refers specifically to Volkov ‘999 and indicates that the surfactant mixture disclosed by Volkov ‘999 is used. At para. 0021, Volkov ‘999 discloses the use of ethanol.
It would have been obvious to one having ordinary skill in the art at the time the invention was made and/or filed to use ethanol as part of the surfactant since Volkov ‘439 indicates that the surfactant mixture disclosed by Volkov ‘999 can be used and since Volkov’999 cites ethanol as part of the surfactant mixture. It is also obvious to vary the amounts of the ingredients to achieve a desired result since they have been identified in the prior art as having effects including thickening, improvement of temperature stability and gaseous reactants. It is well-settled that optimizing a result effective variable is well within the expected ability of a person of ordinary skill in the subject art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980), In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
Regarding claim 4, Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation (i.e. “adapted for”, “configured to”, etc.). These clauses are essentially method limitations or statements of intended or desired use and do not serve to patentably distinguish the claimed structure over that of the reference. See In re Pearson, 181 USPQ 641; In re Yanush, 177 USPQ 705; In re Finsterwalder, 168 USPQ 530; In re Casey, 512 USPQ 235; In re Otto, 136 USPQ 458; Ex parte Masham, 2 USPQ 2nd 1647.
Regarding claim 10, the silica used is from .1-3 % (0027).
Regarding claim 11, the composition can include additional polymer carriers (0035).
Regarding claims 21-27, Volkov ‘439 discloses silica from .1-3%, polyvinyl alcohol and oil mixture from 30-50 % as identified to improve temperature stability, alcohol at 3 %, and ammonium chloride as a gaseous reactant from 1-7 % (0007).
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 21-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. These claims recite amounts of ingredients that are not disclosed by the specification. The specification recites the percents as being a portion of the 70% amount, thus the claimed amounts are not disclosed.
Response to Arguments
Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
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 AILEEN BAKER FELTON whose telephone number is (571)272-6875. The examiner can normally be reached Monday 9-5:30, Thursday 11-3, Friday 9-5:30.
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, Jonathan Johnson can be reached at 571-272-1177. 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.
/AILEEN B FELTON/Primary Examiner, Art Unit 1734
Prosecution Insights