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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it has fewer than 50 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 25 and 35 are objected to because of the following informalities:
Regarding claims 25 and 35, at the end of mixing line a, the semicolon must be deleted or replaced with a colon.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 25-44 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.
Independent claims 25 and 35 recite "a compound having Formula (I) Ca-(PO)b-(EO)c-SO4Na, where a is from 6 to 18, b is from 1 to 12, and c is from 0 to 4."
The meaning of the subunit "Ca" is unclear. Is "C6" the chemical formula of the subunit "Ca" like "C60" is the chemical formula of a buckyball? The specification provides no further guidance, and merely teaches that Formula (I) is "an alkoxy sulfate." For purposes of evaluating the claims under 35 USC 112(a) and over the prior art, the limitation "Ca…where a is from 6 to 18" is interpreted as "a group having 6 to 18 carbon atoms."
The meaning of the subunit "(PO)b" is unclear. Does this represent oxygen bonded to phosphorus? Given that the specification teaches that Formula (I) is "an alkoxy sulfate," for purposes of evaluating the claims under 35 USC 112(a) and over the prior art, the limitation "PO" is interpreted as "polypropylene oxide."
The meaning of the subunit "(EO)c" is unclear. Given that the specification teaches that Formula (I) is "an alkoxy sulfate," for purposes of evaluating the claims under 35 USC 112(a) and over the prior art, the limitation "EO" is interpreted as "polyethylene oxide."
Independent claims 25 and 35 recite the limitation "determining the salt concentration which produces an equal volume of oil and volume of water within a formed microemulsion" in step b. There is insufficient antecedent basis for the limitation "the salt concentration" in the claim. The salt concentration of what? What relationship, if any, does step b have to step a?
Independent claims 25 and 35 recite the limitation "determining the equivalent alkane carbon number using Formula (II)…" in step c. There is insufficient antecedent basis for the limitation "the equivalent alkane carbon number" in step c. The equivalent alkane carbon number of what? What relationship, if any, does the equivalent alkane carbon number of step c have to the "one or more compositions" of step a? Does the "equivalent alkane carbon number" of step c refer to the previously recited preamble limitation of "the equivalent alkane carbon number (EACN) of a composition comprising oil"? The "composition" of the preamble is distinct from the "one or more compositions" of step a.
Independent claims 25 and 35 recite the limitation "S is the salt concentration producing equal volume of oil and volume of water within a formed microemulsion" in step c. Does "the salt concentration" refer to "the salt concentration" recited in step b? If so, the limitation "a formed microemulsion" in step c must be changed to "the formed microemulsion." If not, there is insufficient antecedent basis for the limitation "the salt concentration" in step c.
Independent claims 25 and 35 recite the limitation "EACN is the equivalent alkane carbon number of the oil phase" in step c. There is insufficient antecedent basis for the limitation "the oil phase" in step c. What relationship, if any, does the oil phase of step c have to step a or step b?
Dependent claims 26-34 and 36-44 are rejected for inheriting the deficiencies of the respective independent claim.
Claims 27, 28, 37, and 38 recite the limitation "wherein the salt is present at …" Present in what? The meaning of the claimed amounts of salt is unclear.
Dependent claim 41 recites the limitation "wherein at least one of the one or more compositions further comprises a solubilizer." There is insufficient antecedent basis for this limitation because independent claim 35 recites the limitation "one or more compositions consisting essentially of…" The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. See MPEP 2111.03, III. It is unclear whether the recited solubilizer materially affects the basic and novel characteristic(s)" of the claimed invention and therefor it is unclear whether dependent claim 41 contains all of the limitations of independent claim 35.
Dependent claim 42 is rejected for inheriting the deficiencies of claim 41.
Dependent claim 43 recites the limitation "wherein the one or more oils comprises a water-soluble solvent." One of ordinary skill in the art would consider a water-soluble solvent to be distinct from one or more oils. Independent claim 35 recites the limitation "one or more compositions consisting essentially of…" The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. See MPEP 2111.03, III. It is unclear whether the recited water-soluble solvent materially affects the basic and novel characteristic(s)" of the claimed invention and therefor it is unclear whether dependent claim 43 contains all of the limitations of independent claim 35.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 25-44 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a law of nature and an abstract idea without significantly more.
Independent claims 25 and 35 recite "b. determining the salt concentration which produces an equal volume of oil and volume of water within a formed microemulsion." This salt concentration is the optimum salinity (S*) at which a surfactant system interacts equally with the oil and water phases of a Winsor Type III microemulsion system. This equal interaction reflects a law of nature. The relationship between optimum salinity (S*) and the volume of oil and the volume of water within a formed microemulsion can be expressed mathematically as Vo = Vw, where Vo is the volume of oil in the microemulsion and Vw is the volume of water. Accordingly, the optimal salinity of a microemulsion system is an abstract idea that is a mathematical concept. Step b of claims 25 and 35 can be performed entirely by a mental process, such as by visually inspecting photographs of previously acquired microemulsion phase behavior experiments (e.g., performing mentals steps by the human mind when examining Fig. 1 of the instant application).
Independent claims 25 and 35 further recite "determining the equivalent alkane carbon number using Formula (II) HLD=ln(S)−K·EACN+Cc−f(A)−αTΔ(T) …" This HLD equation is a law of nature and a mathematical concept that describes the relationship between the overall hydrophilicity/hydrophobicity of a system comprising oil, water, an anionic surfactant, and a salt to variables that include salt concentration, surfactant-factors, oil-factors, and temperature. Step c of claims 25 and 35 can be performed by mental process.
The judicial exceptions are not integrated into a practical application because the claims do not recite any application of determining the EACN of an oil phase.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Independent claims 25 and 35 recite "a. mixing one or more compositions…," which is a physical step that is in addition to the judicial exceptions. However, this physical mixing step is a well-understood, routine, and conventional step that is necessary to gather data for microemulsion phase behavior experiments. The courts have recognized that mere data-gathering steps are insignificant extra-solution activity. See MPEP 2106.05(g).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 25-29, 33-36-39, and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wan ("Characterization of Crude Oil Equivalent Alkane Carbon Number (EACN) for Surfactant Flooding Design," Journal of Dispersion Science and Technology, 2016; IDS).
Regarding claims 25, 26, 33-36, and 44, Wan discloses a method for determining the equivalent alkane carbon number (EACN) of a composition comprising oil (third method using extended surfactant, page 282, right col., second full para.; section 4, pages 284-286), the method comprising;
a. mixing one or more compositions (page 282, right col., third full para.) comprising or consisting essentially of
i. a compound having Formula (I) Ca-(PO)b-(EO)c-SO4Na, where Ca is a group having 8 carbon atoms, b is 4, and c is 1 [anionic extended surfactant (alkyl propoxy-ethoxy sulfate, AF 8-41S), C8H17-(PO)4-(EO)1-SO4Na, page 282, section 2.1, second para.; Table 3, first entry];
sulfate, AF 8-41S);
ii. one or more oils (crude oil, abstract);
iii. water (page 282, right col., third full para.); and
iv. a salt that is sodium chloride (page 282, right col., second full para.);
b. determining the salt concentration which produces an equal volume of oil and volume of water within a formed microemulsion ("the salinity that can produce the system with the lowest IFT, shortest coalescence time, and equal volumes of oil and water solubilized in the middle phase microemulsions was considered as the optimal salinity (S*) for the system," page 282, right col., third full para.);
c. determining the equivalent alkane carbon number using Equation (3) (page 281; page 285, left col.; Table 4).
Wan's Equation (3) is a simplification of Wan's Equation (2) at room temperature in the absence of alcohol for HLD = 0 [equation (A)] (page 281; page 285, left col., first two para.).
Wan's Equation (2) is mathematically equivalent to the following equation (B):
0 = ln(S*) − K·EACN + Cc −f(A) −αTΔ(T).
Given that Wan teaches that the EACN is determined for HLD = 0 [equation (A)], equation (A) and equation (B) are both equal to zero and to each other and provide the claimed Formula (II):
HLD = ln(S)− K·EACN + Cc −f(A) −αTΔ(T);
Accordingly, Wan discloses determining the equivalent alkane carbon number using Formula (II),
where HLD is the hydrophilic-lipophilic deviation value, S is the salt concentration producing equal volume of oil and volume of water within a formed microemulsion, K is an empirical constant, EACN is the equivalent alkane carbon number of the oil phase, Cc is a constant characterizing the hydrophilicity and lipophilicity of the compound of Formula (I), f(A) is a function of added alcohol, αT is an empirical constant, and Δ(T) is the temperature deviation from 25° C (page 281).
Regarding claims 27 and 37, in the third method using extended surfactant, Wan discloses optimal salinities S* for various crude oils that are as low as 14.8 wt% NaCl (Table 4). The optimal salinities S* refer to the NaCl concentration in the added brine comprising surfactant (page 282, right col., third full para.; see also page 281, left col. where salinity refers to salinity of "brine"). As noted above in the rejections under 35 USC 112(b), the claims are indefinite because they do not specify where the salt is present. Accordingly, the range recited in 27 and 37 can be broadly interpreted to refer to salt present in the one or more compositions formed in mixing step a. Given that crude oil has approximately 90% of the density of water, and given that Wan's phase behavior studies were performed by adding equal volumes of oil and brine (page 282, right col., third full para.), Wan's disclosure of 14.8 wt% NaCl in the added brine corresponds to approximately 7.8 wt% NaCl1 in the overall Winsor type III system. Accordingly, Wan discloses that the salt is present [in the one or more compositions formed in mixing step a] at an amount of about 1 wt. % to about 10 wt. %.
Regarding claims 28 and 38, Wan discloses that the salt is present [in the brine comprising surfactant, page 282, right col., third full para.] at an amount of about 10 wt. % to about 25 wt. % (Table 4, S* values ranging from 14.8 wt% NaCl to 19.1 wt% NaCl).
Regarding claims 29 and 39, it is inherent that Wan's crude oil samples comprise at least one non-polar oil.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 30, 31, 41, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Wan in view of Phan ("Effect of Extended Surfactant Structure on Interfacial Tension and Microemulsion Formation with Triglycerides," J Am Oil Chem Soc, 2011).
Regarding claims 30 and 41, Wan does not disclose that at least one of the one or more compositions further comprises a solubilizer.
In the analogous art of finding the performing salinity scans of Winsor Type III microemulsion systems (Fig. 1), Phan discloses using extended surfactants such as C123(B)–8PO–SO4 (C12,13H25,27-(PO)8–SO4Na) (Table 1) to identify a S* of 10.5% NaCl for canola oil and 6.5% NaCl for tricaprylin (Table 3). Phan teaches that the hydrocarbon chain of as C123(B)–8PO–SO4Na surfactant is a mixture of branched alkyl of C12 and C13 (page 1226, left col.). One of these surfactants of the mixture can be interpreted as the compound having Formula (I) and the other as the solubilizer of claims 30 and 41.
Phan teaches that branching of the hydrocarbon tail of extended surfactants lowers optimum salinity and IFT values (abstract). For the benefit of lowering optimum salinity and IFT values, it would have been obvious to one of ordinary skill in the art before the time of the invention to replace the extended surfactant of Wan with the mixture of branched surfactants disclosed by Phan, thereby providing the solubilizer of claims 30 and 41.
The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
In the alternative regarding claims 30, 31, 41, and 42, Wan does not disclose that at least one of the one or more compositions further comprises a solubilizer that is pre-mixed with at least one of the one or more oils.
Phan discloses that triglycerides remain the most challenging oil to microemulsify, and that one approach to triglyceride microemulsion formation is co-oil addition (paragraph bridging 113-1224). For the benefit of easier triglyceride microemulsion formation, it would have been obvious to one of ordinary skill in the art before the time of the invention to extend the method of Wan to the analysis of triglycerides with the use of co-oil addition to the triglycerides as a solubilizer of the triglycerides.
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Wan.
Regarding claim 40, it is inherent that Wan's crude oil samples comprise at least one non-polar oil. Wan does not explicitly teach that the crude oil samples comprise a polar oil.
Regarding the FC crude sample, which was also tested by the third method using extended surfactant (Table 4), Wan teaches "these crude oil samples might not contain elevated levels of heavy end compounds (e.g., asphaltenes and resins)" (page 284, right col, first para.). Asphaltenes and resins are polar oils. Wan teaching that the crude oil samples might not contain elevated levels of asphaltenes and resins at least suggests a non-zero level of asphaltenes and resins. The examiner takes official notice that some crude oil samples comprise a polar oil.
For the benefit of analyzing crude oil samples that comprise asphaltenes and resins, it would have been obvious to one of ordinary skill in the art before the time of the invention that the crude oil samples comprise a non-zero amount of asphaltenes or resins and therefor that the one or more oils comprise a polar oil and a non-polar oil.
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Wan in view of Quintero (US 2019/0284466).
Regarding indefinite claim 43, Wan does not disclose that the one or more oils comprises a water-soluble solvent.
In the analogous art of finding the performing salinity scans of Winsor Type III microemulsion systems (Fig. 4, [0012], [0034], [0048]) using extended surfactants ([0025], [0027]), Quintero teaches use of co-solvents for the surfactant blends, including glycol ethers, which can include ethylene glycol mono-butyl ether, dipropylene glycol mono-methyl ether, propylene glycol ethers, methyl 2-pyrrolidone ([0030]). Accordingly, Quintero broadly discloses oils that "comprise" a water-soluble solvent after mixture to a microemulsion.
For the benefit of better solubilizing surfactants, it would have been obvious to one of ordinary skill in the art before the time of the invention to replace the modify the method of Wan with a water-soluble co-solvent disclosed by Quintero, thereby providing indefinite limitation that the one or more oils "comprises" a water-soluble solvent.
The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Chen (US 2020/0392395) discloses calculating EACN of oil based on Formula II using a compound of Formula (I) as claimed in claim 34 (Table 3, [0101], [0083]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE ADAMS whose telephone number is (571)270-5043. The examiner can normally be reached M, T, Th, and F, 12-4 P.M.
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/MICHELLE ADAMS/ Examiner, Art Unit 1797
/JENNIFER WECKER/ Primary Examiner, Art Unit 1797
1 14.8% divided by 1.9.