DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 1/26/26, claims 1-10 are currently pending in the application.
Claim 4 recites the limitation “at high pressure and ultra-high salinity”. It is noted that the “high” is a relative term, and “ultra-high” is a relative compound term. Although examiner is not levying a new ground of rejection in order to maintain compact prosecution, Applicant is being altered to a potential violation under 112(b) same for future reference.
Specification
The disclosure is objected to because of the following informality:
In Table 5, the term “Producto” should be amended to “Product”.
Appropriate correction and/or clarification 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended claim 1 is as follows:
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Claim 1 is indefinite due to conflicting claim language. The first wherein clause defines that the first structural unit (comprising R1-R4) in the terpolymer structure may be derived from acrylic acid (i.e., R1=R2=R4=H, R3=COOH), methacrylic acid (R2=R4=H, R1=CH3, and R3=COOH), maleic acid (R1=R4 =H, R2=R4=COOH), aconitic acid (R1=H, R2=COOH, R3=COOH, R4=CH2COOH), or any of mesaconic/citraconic acid etc.; the second structural unit is derived from sodium alkenyl sulfonate, having R5-R8 groups as defined in claim 1; and the third structural unit is derived from aconitic acid.
Given that the broad scope of the first structural unit in the first wherein clause encompasses units of acrylic acid, methacrylic acid, maleic acid etc., i.e., monomers that fall outside of the scope of the second wherein clause, given that the second wherein clause limits the terpolymer to one that is derived from at least one of itaconic acid or its isomers, at least one of aconitic acid or its isomers, and at least one alkenyl sulfonate, i.e., open ended to more than 3 types of monomer units, and given that the term “terpolymer” is a polymer that is composed of three distinct monomer units, the scope of the claimed terpolymer lacks clarity. Claims 2-10 depend on rejected base claim 1 are therefore, subsumed by this rejection.
In claim 2, the recitation of “barium” and “strontium” as mineral scales lacks clarity. While mineral scales refer to deposits of inorganic salts, “barium” and “strontium” refer to metals as elements, and not to inorganic salts.
Claim 7 is indefinite due to conflicting claim language. The recitation “sodium alkenyl sulfonates” implies only sodium salts, whereas the recited species include sulfonic acids as well as salts thereof.
Claim 8 recites that the salts include at least one of sodium or potassium. Claim 8 lacks clarity because it includes sodium and potassium salts, whereas it depends on claim 7 that limits the scope of “sodium alkenyl sulfonates”.
For the purpose of examination, in view of the instant specification which discloses a random terpolymers based on itaconic acid or its isomers, aconitic acid or their isomers and sodium alkenyl sulphonates (page 16), and in view of the support for isomers in claims 5, 6, the terpolymer of claim 1 is interpreted to be a terpolymer derived from (1) itaconic acid or an isomer of itaconic acid, (2) sodium alkenyl sulfonate, defined by groups R5 to R8 in claim 1, and (3) aconitic acid or an isomer of aconitic acid, wherein an isomer of itaconic acid is cis-glutaconic acid, trans-glutaconic acid or mesaconic acid, and an isomer of aconitic acid is cis-aconitic acid or trans-aconitic acid. Applicant is advised to amend the scope of R1 to R4 in claim 1 for consistency with the second wherein clause.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (US 6,210,600 B1, of record).
Regarding claims 1, 7 and 8, Zhou teaches scale inhibiting polymers to control calcium phosphate scale, having an olefinically unsaturated carboxylic acid monomer, and at least one monomer including a copolymerizable sulfonated monomer (Ab., col. 1, lines 9-11, ref. claims 1, 3).
Disclosed genus of olefinically unsaturated carboxylic acid monomers includes itaconic acid and aconitic acid, i.e., equivalence thereof. Disclosed genus of sulfonated monomers includes allyl sulfonic acid, styrene sulfonic acid, acrylamido alkane sulfonic acid, and alkali metal salts thereof (col. 3, lines 1-46, ref. claim 5). Additionally, disclosed Examples 9 and 11 are drawn to copolymers comprising a unit of sodium styrene sulfonate (reads on sodium alkenyl sulfonate) (TABLE 1).
Zhou is silent on a terpolymer derived from itaconic acid or its isomer, aconitic acid or its isomer, and sodium alkenyl sulfonate, in one single embodiment.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching in Zhou on itaconic acid and aconitic acid as suitable carboxylic acid monomers, and the teaching on suitable sulfonated monomers, including those capable of providing for a unit with the claimed R5 to R8, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a terpolymer from itaconic acid, aconitic acid, and a sodium salt of any of allyl sulfonic acid, styrene sulfonic acid or acrylamido alkane sulfonic acid. It would have been obvious to one of ordinary skill in the art at the time of the invention to combine itaconic acid and aconitic acid, as the two are considered to be equivalents known for the same purpose. “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). MPEP 2144.06.
Regarding claims 2 and 3, the claim preambles are drawn to a terpolymer that are obviated by Zhou for reasons stated above. Noting that Zhou teaches scale inhibiting polymers to control calcium phosphate scale, the limitation “for inhibiting and dispersing mineral scales” recited in claim 2 is an intended use of the claimed terpolymer.
Regarding claim 4, noting that the preamble is drawn to a “terpolymer”, the limitation “is administered at high pressure and ultra-high salinity” is not seen as altering the scope of the claimed terpolymer.
A skilled artisan would reasonably expect Zhou’s terpolymers of overlapping scope to be capable of inhibiting and dispersing claimed mineral scales, including those in oil field equipment, and to be capable of being administered at high pressure and ultra-high salinity, absent evidence to the contrary.
Regarding claims 5 and 6, Zhou teaches itaconic acid and aconitic acid as suitable carboxylic acid monomers. Thus, given the alternative recitations “itaconic acid or its isomers” and “aconitic acid or its isomers” in claim 1, the isomer species of claims 5 and 6 are not seen as necessarily limiting the scope of claim 1.
In the alternative, although Zhou is silent on the claimed isomers, nevertheless, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Regarding claim 10, Zhou teaches scale inhibiting polymers having an average molecular weight of about 1500 to 250,000 (col. 3, lines 63-65), i.e., is open to being a number average molecular weight and overlaps with the claimed range, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Moreover, case laws holds that if there is no evidence in the record pointing to any critical significance in a claimed molecular weight then the claims are not patentable over the prior art. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (US 6,210,600 B1), in view of Suau et al. (US 2003/0045647 A1).
The discussion on Zhou as applied to claim 1 from preceding paragraphs is incorporated herein by reference.
Although Zhou is silent on a random terpolymer as claimed, in a related field of endeavor, Suau teaches water-soluble polymers for use cleaning formulations and capable of dispersing mineral particles (Ab., ref. claims), formed from radical polymerizable acid- containing monomers [0015]. It is further noted that random copolymers of the present invention are formed by radical polymerization of monomers (Examples). Thus, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare Zhou's polymers, including those of the claimed invention, by radical polymerization method, to provide for a random terpolymer of the claimed invention.
Response to Arguments
In view of the amendment dated 1/26/26, the rejections of record are withdrawn and rewritten herein above, relying in the art of the record. Applicant’s arguments dated 1/26/26 have been duly considered.
Applicant argues that Zhou relates to copolymers with anti-scaling properties, and does not provide any examples in which the disclosed copolymers have a competitive advantage as anti-scaling agents over any type of terpolymer mentioned in the prior art, that data in TABLE 5 demonstrates that chemical structure is a key element in the antifouling agents with improved properties.
As an initial matter, clarification is sought on “Producto 5” in TABLE 5. The paragraph preceding the table refers to the scale inhibitor capability of product 1 and product 3, and it is unclear what Producto 5 corresponds, if it corresponds to product 3.
It is noted that product 1 in Table 5 corresponds to a terpolymer of Example 1 formed from aconitic acid (100g), itaconic acid (60g), and sodium vinyl sulfonate (74.5g). Additionally, product 3 corresponds to a terpolymer of Example 3 formed from aconitic acid (100g), itaconic acid (37.2g), and sodium vinyl sulfonate (74.5g). Producto 1 and Producto 5 are compared against a copolymer formed of itaconic acid/sodium vinyl sulfonate (1:3 mass ratio).
It is further noted that the comparison in TABLE 5 is not against the closest prior art of record to Zhou, because Zhou prescribes a polymer consisting of about 50 to about 99 wt.%, of an olefinically unsaturated carboxylic acid monomer (such as itaconic acid and aconitic acid, i.e., taught as equivalents) and about 1 to about 50 wt.% of copolymerizable sulfonated monomers (col. 2, line 42-col. 3, line 26, ref. claim 1). Thus, given that the copolymer formed of itaconic acid/sodium vinyl sulfonate (1:3 mass ratio) falls outside of the scope of Zhou’s copolymers, the comparison on record is not against the closest prior art of record.
Even so, although Producto 1 and Producto 5 in TABLE 5 demonstrate improved efficiency when compared against a copolymer formed of itaconic acid/sodium vinyl sulfonate (1:3 mass ratio), the data is limited to the superior efficiency of specific terpolymers, and is not reasonably commensurate in scope with the claim language.
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762