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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/12/2026 has been entered.
Claim Rejections - 35 USC § 112
Claims 21-23 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.
The status identifier of claim 21 states claims 21-23 are cancelled but recite the full claim language for each of the claims while claims 22-23 provide the status identifiers of previously presented. As such, it is unclear if said claims are cancelled or pending. For the purposes of Examination, it will be assumed claims 21-23 are pending.
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.
Claim(s) 1, 5, 7-15, 17-18, 20-21, and 23-24 is/are rejected under 35 U.S.C. 103 as obvious over Gurney et al. (US 2017/0001893) in view of O’Rear et al. (US 2016/0271005).
Regarding claim 1 and 13, Gurney teaches a method for removing a soluble heavy metal-sulfur complex (sulfide and heavy metals in the aqueous portion) from an aqueous or glycol process solution, the method comprising the steps of: (i)a contacting the process solution with an oxidant to oxidize the heavy metal-sulfur complex and form an oxidized complex precipitate; and/or (i)b contacting the process solution with an acid (carbonic acid the inherent result of carbon dioxide mixed with water, see also [0036] detailing carbon dioxide reducing the pH), to precipitate the heavy metal-sulfur complex and form an acidified complex precipitate; and (ii) removing the precipitates from the process solution to provide a heavy metal-reduced process solution ([0005]-[0024] and [0034]-[0039]). Further, Gurney teaches ozone is added to the solution and the oxidation reaction of the sulfides would occur thereby providing the precipitated compounds ([0067]-[0068]).
It is noted that the process steps, contaminants (heavy metals and sulfides), and results (precipitates) are taught to be identical or substantially the same, certain language detailing the contaminants (heavy metal sulfur complex) and/or acid addition are not explicitly stated. However, one skilled in the art would have expected the identical type of contaminants and/or acid addition via the inherent reaction with carbon dioxide in water even if not explicitly stated, or it would have been obvious to optimize the concentrations involved to achieve said results. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Gurney teaches that heavy metals ([0022]-[0023]), sulfides/disulfides ([0022]-[0023]) that are inorganic ([0024]) are provided in a solution with the pH ranging from 7 and above but fails to explicitly state soluble heavy metal-sulfur complexes are formed from the contact of the heavy metals and inorganic polysuflides. O’Rear teaches that one skilled in the art would expect heavy metal sulfide complexes to be formed in a solution having a pH greater than 7 when heavy metals and inorganic sulfides contact one another ([0006], [0022] and [0031]). As Gurney teaches the solution would have a pH greater than 7 with heavy metals and sulfides therein allowing contact within the solution, one skilled in the art would expect the claimed heavy metal sulfide complexes to be formed even if not explicitly taught in Gurney.
Regarding claim 5, Gurney teaches that the solution contains heavy metals and alkaline polysulfides (2 sulfide anions) thereby making any complexes formed as claimed, or such complexes would have been expected or produced due to the various concentrations and pH values ([0022]-[0030] and O’Rear [0006]).
Regarding claims 7-9, Gurney teaches that the oxidant is added via sparging (distributor or nozzle array 8) ([0196]).
Regarding claim 10, Gurney teaches that the oxidant is ozone ([0196]).
Regarding claims 11-12, it is submitted that the carbon dioxide forms carbonic acid, which would be considered a weak acid withing the claimed molecular weight and pKa claimed.
Regarding claims 14-15, Gurney teaches that the separation is performed via filtration/ultrafiltration ([0099]-[0104]). Regarding claims 17-18, Gurney teaches the same method steps but does not teach the results (specific removal percentage or concentration of contaminants) of the method steps as claimed. However, the Gurney process is capable of being performed in a manner to achieve said results by optimizing various process parameters such as the concentration of reagents added and the time allowed for the desired reactions. As such, one skilled in the art would have found it obvious to optimize the well-known variables in Gurney to achieve the desired/claimed results. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was "unexpectedly good"); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art.").
Regarding claims 20-21, and 23, Gurney teaches the aqueous solution is sourced from various oil and gas process streams ([0002).
Regarding claim 24, Gurney teaches that the process can be applied to a variety of streams that include the heavy metals and sulfur contaminants. As such, one skilled in the art would have found it obvious to apply the Gurney process to any aqueous stream from a variety of sources, including generic water treatment process streams with a reasonable expectation of success as long as the aqueous process stream contains the heavy metals and sulfur contaminants.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gurney et al. (US 2017/0001893) in view of O’Rear et al. (US 2016/0271005) and further in view of McGarvey et al. (WO 2015/084579).
Regarding claims 2-3, Gurney broadly teaches that heavy metals and sulfides are present but fails to specifically state the heavy metal portion is mercury. McGarvey teaches treating similar streams having heavy metals and sulfide with oxidation in order to remove the heavy metals while preventing corrosion, and that such heavy metals would include mercury ([0013] and [0038]). As such, one skilled in the art would have found it obvious to apply the Gurney method to various heavy metal/sulfur containing streams wherein the heavy metal includes mercury as similar oxidation steps have been applied to streams having the contaminants of mercury and sulfur contaminants and one skilled in the art would have a reasonable expectation of success in doing so.
Claim(s) 16 and 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gurney et al. (US 2017/0001893) in view of O’Rear et al. (US 2016/0271005) and further in view of Lombardi et al. (US 2007/0102359).
Regarding claim 16, Gurney fails to teach a downstream ion exchange treatment. Lombardi teaches that after produced/process water from an oil and gas process stream is treated via oxidation, pH adjustments and filtration, ion-exchange resin polishing is before its selected end use to further polish and remove any residual contaminants (Fig 8 and [0105]). As such, one skilled in the art would have found it obvious to provide an ion exchange polishing step in order to further polish the water before the selected end use.
Regarding claims 26-27, Gurney fails to teach the inclusion of a flocculation aid either before or after steps (i)a or (i)b. Lombardi teaches that flocculation aids can be added after the oxidation step (Fig. 7) in order to remove any solids in the stream being treated. As such, one skilled in the art would have found it obvious to provide a step where a flocculation aid is added in order to aid in the separation of solids and liquids in the process stream. It is noted that the addition of a flocculant aid can be performed as taught in Lombardi, or it would have been obvious to mix up the order to the method steps (Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Claim(s) 19 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gurney et al. (US 2017/0001893) in view of O’Rear et al. (US 2016/0271005) and further in view of Nichols et al. (US 2011/0000854).
Regarding claims 19 and 22, Gurney fails to teach that the process stream further includes glycol. Nichols teaches that common contaminants in oil and gas process waters include glycol, sulfides, and heavy metals, and said process streams can be treated via oxidation to precipitate out undesired contaminants ([0037], [0155], and [0328]). As such, one skilled in the art would have found it obvious to apply the Gurney process to other process waters that include glycol with the heavy metals and sulfur contaminants as glycol is a well-known additive used in the oil and gas drilling operations.
It is noted that glycol is a known and used thermal inhibitor in the art.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gurney et al. (US 2017/0001893) in view of O’Rear et al. (US 2016/0271005) and further in view of Copenhafer (US 2013/0248462).
Regarding claim 25, Gurney fails to teach the process water is sourced from a mining operation as claimed. Copenhafer teaches that a stream from mining/ground operations can contain similar contaminants as the ones stated in Gurney is treated via oxidation (]0031]-[0035] and [0107]). As such, one skilled in the art would have found it obvious to apply the Gurney process with a reasonable expectation of success to other ground/drilling/mining operations as they would contain similar contaminant and it is known to use similar steps to remove the similar contaminants.
Response to Arguments
Applicant's arguments filed 5/12/2026 have been fully considered but they are not persuasive.
Applicant argues that Gurney teaches the heavy metals and sulfides as distinct species and not a complex as claimed. It should be noted that complexes are formed from distinct species that are clustered together. Gurney never states that complexes are not formed, only that the heavy metals and sulfides are together in the solution. O’Rear clearly teaches that in the same conditions taught in Gurney, one skilled in the art would expect complexes to be formed.
Applicant next argues that the oxidation reaction occurs on free sulfide ions. It is noted that Gurney teaches that sulfide compounds are oxidized via ozone. The sulfide compounds would still be sulfide compounds that are oxidized as part of a complex or not. There is no basis for Applicant’s interpretation that the ozone oxidation process taught in Gurney would only apply to “free” sulfide compounds. Further, the actual method steps in Gurney and the ones claimed are the same (identical compounds being removed in the same solution by the same oxidant/ozone). As such, one would expect the same results.
Conclusion
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/PETER KEYWORTH/Primary Examiner, Art Unit 1776
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