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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/19/2025 has been entered.
Response to Amendment
Claims 1-20 are pending. Claims 19-20 are withdrawn from consideration.
The previous rejection of claim 18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is maintained in view of applicant’s amendment.
The previous rejection of claims 1, 7-18 under 35 U.S.C. 103 as being unpatentable over Madolora et al. (US10,280,100) is maintained in view of applicant’s amendment.
The previous rejection of claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Madolora et al. (US10,280,100) in view of Tiger (TRANSACTIONS OF THE A.S.M.E. JANUARY, 1942) is maintained in view of applicant’s amendment.
Claim Rejections - 35 USC § 103
Claims 1, 7-18 are rejected under 35 U.S.C. 103 as being unpatentable over Madolora et al. (US10,280, 100).
Regarding claims 1, 9-15, Madolara discloses compositions for treating wastewater within the wastewater treatment system for preventing or reducing the occurrence of struvite scale formation within the wastewater treatment system (abstract), the composition comprises a magnesium compound, which includes magnesium oxide exhibiting a particle size of between about 0.1 micron to about 30 micron and a specific surface area of between about 9 m2/g to about 300 m2/g (col 2, In 45-49 and Table 2). Madolara discloses the magnesium oxide may be provided as a powder and may be added directly to wastewater within the wastewater treatment system and/or may be mixed with water to provide a slurry including between about 30% to about 90% magnesium oxide solids in water, which may be added to wastewater within the wastewater treatment system (col 10, In 50-58). The concentration of the magnesium compound added to the wastewater treatment system may vary, for example, based on an intended objective for the magnesium compound. Based on these disclosures, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to determine an optimum concentration of magnesium compound, which includes magnesium oxide, to prevent or reduce the occurrence of struvite scale formation within the wastewater treatment system, to reduce corrosion of pumping equipment, conveyance equipment, processing equipment or the like. Magnesium compounds may be added to wastewater to achieve and/or facilitate various additional/alternative objectives within a wastewater treatment system. The claims also would have been obvious over the teachings of the reference because overlapping ranges would have been obvious. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976): In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and MPEP 2144.05, |.
The recitation of "a silica reducer composition" and “the silica reducer composition reducing silica content in produced water when contacted with the produced water in the produced water treatment vessel” are treated as statements of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The claims were obvious because all the elements of the claimed composition were accounted for in the prior art, and that the composition taught by the prior art would have been expected by a person of ordinary skill in the art to reduce silica content in produced water when contacted with the produced water in a water treatment vessel.
Regarding claims 7 and 8, Madolara discloses the composition further comprising silicon oxide (col 3, In 60-col 4, In 5).
Regarding claims 16-17, Madolara does not disclose the specific surface area of the particles of the magnesium oxide is provided to inhibit hydration of the magnesium oxide above 10% for a residence time between addition into the produced water until entering the produced water treatment vessel at an operating temperature. However, Madolara discloses the magnesium oxide having claimed specific surface area, therefore the magnesium oxide of Madolara should inhibit hydration of the magnesium oxide above 10% for a residence time between addition into the produced water until entering the produced water treatment vessel at claimed operating temperature. Product of identical chemical composition cannot have mutually exclusive properties. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Inre Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also /n re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977).
Regarding claim 18, Madolora does not disclose the compositions has a loose bulk density of 0.30to 0.75 kg/L as claimed. However, both the claimed and prior art compositions contain same components, one of ordinary skill in the art would have expected the compositions of Madolora to have the claimed loose bulk density because the law held that if the composition is physically the same, it must have the same properties. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Madolora et al. (US10,280, 100) in view of Tiger (TRANSACTIONS OF THE A.S.M.E. JANUARY, 1942).
Regarding claims 1, 9-15, Madolara discloses compositions for treating wastewater within the wastewater treatment system for preventing or reducing the occurrence of struvite scale formation within the wastewater treatment system (abstract), the composition comprises a magnesium compound, which includes magnesium oxide exhibiting a particle size of between about 0.1 micron to about 30 micron and a specific surface area of between about 9 m2/g to about 300 m2/g (col 2, In 45-49 and Table 2). Madolara discloses the magnesium oxide may be provided as a powder and may be added directly to wastewater within the wastewater treatment system and/or may be mixed with water to provide a slurry including between about 30% to about 90% magnesium oxide solids in water, which may be added to wastewater within the wastewater treatment system (col 10, In 50-58). The concentration of the magnesium compound added to the wastewater treatment system may vary, for example, based on an intended objective for the magnesium compound. Based on these disclosures, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to determine an optimum concentration of magnesium compound, which includes magnesium oxide, to prevent or reduce the occurrence of struvite scale formation within the wastewater treatment system, to reduce corrosion of pumping equipment, conveyance equipment, processing equipment or the like. Magnesium compounds may be added to wastewater to achieve and/or facilitate various additional/alternative objectives within a wastewater treatment system. The claims also would have been obvious over the teachings of the reference because overlapping ranges would have been obvious. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976): In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and MPEP 2144.05, |.
Madolara does not disclose the composition is a silica reducer composition. Tiger discloses removing silica with magnesium oxide (magnesia, MgO). Therefore, it would have been obvious to one of ordinary skill in the art before the filling date of the invention to use the composition of Madolara, which contains mainly of magnesium oxide as a silica reducer for the purpose of removing silica from water with a reasonable expectation of success.
Regarding claims 2-6, Tiger discloses aluminum oxide (alumina), ferric oxide, and calcium oxide (CaO) are used for the removal of silica (page 50). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to add aluminum oxide (alumina), ferric oxide, and calcium oxide (CaO) to the composition of Madolara, for the purpose of removing silica from water with a reasonable expectation of success. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding claims 7 and 8, Madolara discloses the composition further comprising silicon oxide (col 3, In 60-col 4, In 5).
Regarding claims 16-17, Madolara does not disclose the specific surface area of the particles of the magnesium oxide is provided to inhibit hydration of the magnesium oxide above 10% for a residence time between addition into the produced water until entering the produced water treatment vessel at an operating temperature. However, Madolara discloses the magnesium oxide having claimed specific surface area, therefore the magnesium oxide of Madolara should inhibit hydration of the magnesium oxide above 10% for a residence time between addition into the produced water until entering the produced water treatment vessel at claimed operating temperature. Product of identical chemical composition cannot have mutually exclusive properties. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also /n re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977).
Regarding claim 18, Madolora does not disclose the compositions has a loose bulk density of 0.30to 0.75 kg/L as claimed. However, both the claimed and prior art compositions contain same components, one of ordinary skill in the art would have expected the compositions of Madolora to have the claimed loose bulk density because the law held that if the composition is physically the same, it must have the same properties. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 11/19/2025 have been fully considered but they are not persuasive.
Regarding the rejection of claim 18 under 35 U.S.C. Section 112 for not defining the “packed bulk density”, applicant argued that a person of ordinary skill in the art, seeking to measure the tap density of a powder, would have referred to well-established International Standards available at the time of filing, that provide such procedural details. For example, ISO 3953:2011 describes the use of a graduated glass cylinder “calibrated to contain 100 cm3” for powders having apparent densities below 1 kg/L, such as the magnesium oxide powder defined in claim 1. The examiner respectfully disagrees. According to the ISO 3953:2011, “ In practice, the minimum number of taps, N, would be determined such that no further change in volume takes place. For all further tests on the same type of powder, the cylinder would be subjected to 2N taps, except where general experience and acceptance has established a specific number of taps (no less than N taps) as being satisfactory. For fine refractory metal powders, 3 000 taps has been found to be satisfactory for all sizes.” The claim and specification do not provide and specify what Standard being used as well as the number of desired taps in order to measure the tap density.
Regarding the rejection under 35 U.S.C. Section 103 of claims 1 and 7-18 as being allegedly obvious in view of Madolora (US 10,280,100) and the rejection of claims 1-18 as being allegedly obvious in view of Madolora combined with Tiger (Transactions of the A.S. M. E. January, 1942), applicant argues that Madolora teaches an admixture intended for the treatment of wastewater to reduce Struvite scale formation. In stark contrast, the instant claims are directed to a silica reducer composition for use in a produced water treatment vessel and is formulated to provide enhanced silica reduction effects. The wastewater of Madolora is different from the silica-containing produced water, and the composition and function of the claimed silica reducer composition is also distinct from the admixture of Madolora. The examiner respectfully disagrees with applicant’s arguments. Applicant’s arguments rely on language reciting the intended use of the composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The claims were obvious because all the elements of the claimed composition were accounted for in the prior art, and that the composition taught by the prior art would have been expected by a person of ordinary skill in the art to reduce silica content in produced water when contacted with the produced water in a water treatment vessel. In addition, in view of Tiger reference, Tiger discloses removing silica with magnesium oxide (magnesia, MgO). Therefore, it would have been obvious to one of ordinary skill in the art before the filling date of the invention to use the composition of Madolara, which contains mainly of magnesium oxide as a silica reducer for the purpose of removing silica from water with a reasonable expectation of success.
With respect to applicant’s assertion that “silica removal efficiency is notably decreased if the MgO in the slurry hydrates to Mg(OH)2 before entering the produced-water treatment vessel” and the present application further provides specific guidance on particle-size distribution and surface-area characteristics of the MgO particles to “promote resistance to the premature formation of magnesium hydroxide”, and that Madolora addresses an entirely different problem, phosphate- scale inhibition in wastewater, under process conditions that are incompatible with the silica-reduction mechanisms described in the present application and therefore a person of ordinary skill in the art seeking to develop a composition for reducing silica in produced-water treatment vessels would have had no reason to rely on the teachings of Madolora, nor any reasonable expectation of success in doing so, since Madolora provides no teaching or suggestion relevant to silica reduction, it is noted that arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of applicant statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
Applicant further argues that Madolora teaches the addition of silica compounds to the wastewater as a seed material, and therefore appears to teach away from the function of reducing silica in the water stream. The examiner respectfully disagrees because the addition of silicon oxide compounds is recited in the pending claims (claim 7), and thus Madolora cannot teach away from the invention when it teaches the claimed limitation(s).
Applicant also argues that Madolora does not disclose or suggest all of the features recited in claim 1. However, as described in the last Office Action, Madolara discloses all of the features recited in claim 1 and taught ranges overlapping of weight percentages, specific surface area and medium particle sizing. The law held that product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103, See In re Wertheim 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and MPEP 2144.05, I. Since Madolara discloses all of the features recited in claim 1, there is a reasonable basis for one skilled in the art to reasonably expect that the composition for treating wastewater within the wastewater treatment system of Madolora would provide similar results of silica reduction as expected.
Regarding applicant’s arguments that there are no specific examples or embodiments disclosed in Madolora within the scope of the instant claims, the law held that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert, denied, 493 U.S. 975 (1989).
Applicant’s argument with respect to Tiger has been considered but they are not persuasive.
In response to applicant’s argument based upon the age of the reference (technologically obsolete), contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977). In addition, the prior art’s disclosure of more than one alternative (magnesium salts and compounds, magnesium sulphate or compounds prepared form of magnesium oxide) 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). See also MPEP § 2123. The fact that, according to Tiger, ionic magnesium or other compounds comprising magnesium was generally more efficient than magnesium oxide, does not invalidate the fact that magnesium oxide is disclosed and that it does in fact possess a particular benefit for reduction of dissolved silica. Madolora and Tiger are related to scale inhibiting treatment using magnesium oxide and one of ordinary skill in the art before the effective filing date of the instant application would be motivated to use magnesium oxide, to prevent or reduce the occurrence of struvite scale formation as well as silica within the wastewater treatment system, to reduce corrosion of pumping equipment, conveyance equipment, processing equipment or the like.
Claims 1-18 remain unpatentable for the reasons of record.
Conclusion
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/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
12/11/2025