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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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).
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 2, 18, 20, and 21 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.
Claims 2, 18, and 20 have been amended to recite new genera “polysorbate”, “primary alcohol ethoxylate”, “secondary alcohol ethoxylate”, “alkylphenol ethoxylate”, and “polyglucoside”. The genera are not found within the specification as originally filed. The disclosed sub-genera and species of surfactant are not adequately representative of the entirety of the scope encompassed by the terms. Therefore, claims 2, 18, and 20 fail to comply with the written description requirement. See MPEP 2163.05(I)(B).
As claim 21 depends from claim 20, claim 21 is rejected for the same issue discussed above.
Claim 16 is 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.
Claim 16 presents variables w, x, y, and z within the third presented formula, but the variables are undefined. Therefore, the intended scope of the claim is unclear.
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 14, and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pursley (US 2003/0166472 A1) in view of Niraula (Colloids and Surfaces A: Physiochem. Eng. Aspects, 2004, 248, 157-166).
Regarding Claims 1, 3-5 and 14, Pursley teaches microemulsions (Abstract) comprising surfactant, d-limonene solvent (carrier fluid), isopropanol (coupling agent), and water-based fluid such as brine (Claims 1-2 and 8-13, ¶ 14). Preferred oil-in-water surfactants have a HLB between about 8-18 and are biodegradable (¶ 15-16). Pursley differs from the subject matter claimed in that maltoside surfactants are not explicitly described.
Niraula teaches alkyl maltoside surfactants such as dodecyl-B-D-maltoside are known biodegradable surfactants displaying excellent emulsifying characteristics, with a HLB of roughly 13.4 (Abstract; Sections 1.1 and 3.1). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize the maltoside surfactants of Niraula within the microemulsions of Pursley because such surfactants are known to give excellent emulsifying characteristics and display HLBs/biodegradability characteristics consistent with the requirements of Pursley.
Regarding Claims 2 and 16, Pursley teaches the surfactants used can be blends of differing surfactants, such as those comprising polysorbates (¶ 15, 21). Polyoxyethylene sorbitan monopalmitate is explicitly mentioned (¶ 21), consistent with the third formula of claim 16.
Regarding Claims 17 and 19, Purlsey teaches methods for recovering oil comprising injecting the microemulsion into subsurface geological formation (¶ 2, 9, 11, and 26-28). Pursley teaches microemulsions (Abstract) comprising surfactant, d-limonene solvent (carrier fluid), isopropanol (coupling agent), and water-based fluid such as brine (Claims 1-2 and 8-13, ¶ 14). Preferred oil-in-water surfactants have a HLB between about 8-18 and are biodegradable (¶ 15-16). Pursley differs from the subject matter claimed in that maltoside surfactants are not explicitly described.
Niraula teaches alkyl maltoside surfactants such as dodecyl-B-D-maltoside are known biodegradable surfactants displaying excellent emulsifying characteristics, with a HLB of roughly 13.4 (Abstract; Sections 1.1 and 3.1). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize the maltoside surfactants of Niraula within the microemulsions of Pursley because such surfactants are known to give excellent emulsifying characteristics and display HLBs/biodegradability characteristics consistent with the requirements of Pursley.
Regarding Claim 18, Pursley teaches the surfactants used can be blends of differing surfactants, such as those comprising polysorbates (¶ 15, 21).
Claim(s) 6-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pursley (US 2003/0166472 A1) in view of Niraula (Colloids and Surfaces A: Physiochem. Eng. Aspects, 2004, 248, 157-166) as evidenced by Chemical Book (www.chemicalbook.com).
The discussion regarding Pursley and Niraula within ¶ 12-17 is incorporated herein by reference.
Regarding Claim 6, Pursley teaches solvent-surfactant blends can be 25-76 vol% of surfactant, 14-54 vol% d-limonene, 0-20 vol% isopropanol, and 0-50 vol% water (Claim 28) and further include various inorganic salts (¶ 19). The inclusion of water/salt in such mixtures is seen to implicitly suggest the presence brine. When diluted with water/brine, the solvent-surfactant blends themselves form emulsions (¶ 20). As evidenced by Chemical Book, the densities of polyoxyethylene sorbitan monopalmitate, ethoxylated castor oil, and polyethylene glycol are 1.09, 1.05, and 1.27 g/mL respectively, the density of limonene is 0.84 g/mL, and the density of isopropanol is 0.79 g/mL. Therefore, the density of Pursley’s solvent mixture is between 1.05-1.27 g/mL. The density of brine ranges roughly from 1.0-1.2 g/mL. Given such, the position is taken the ranges associated with surfactant/limonene/brine/isopropanol are such that Pursley intrinsically suggests quantities that overlap those claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Pursley suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Pursley. See MPEP 2123.
Regarding Claims 7-9, Pursley teaches microemulsions prepared by treating a water-carrier fluid such as brine with a solvent-surfactant blend, which can be 25-76 vol% of surfactant, 14-54 vol% d-limonene, 0-20 vol% isopropanol, and 0-50 vol% water (Claim 28) (Abstract; ¶ 14, 21, 24). The surfactant mixture includes branched (e.g. ethoxylated castor oil) and linear (e.g. polyoxyethylene sorbitan monopalmitate) surfactants. As evidenced by Chemical Book, the densities of polyoxyethylene sorbitan monopalmitate, ethoxylated castor oil, and polyethylene glycol are 1.09, 1.05, and 1.27 g/mL respectively, the density of limonene is 0.84 g/mL, and the density of isopropanol is 0.79 g/mL. Therefore, the density of Pursley’s solvent mixture is between 1.05-1.27 g/mL. The density of brine ranges roughly from 1.0-1.2 g/mL.
Given this, the position is taken the ranges associated with surfactant/limonene//isopropanol are such that Pursley intrinsically suggests ratios that overlap those claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Pursley suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Pursley. See MPEP 2123.
Regarding Claims 10-13, Pursley teaches microemulsions prepared by treating a water- carrier fluid such as brine with 0.2-2 vol% of a solvent-surfactant blend, which is preferably 36-56 vol% of a surfactant mixture, 15-54 vol% d-limonene (corresponding with “carrier fluid” of the instant claims), and 0-10 vol% isopropanol (corresponding with “coupling agent” of the instant claims) (Abstract; ¶ 14, 21, 24). As evidenced by Chemical Book, the densities of polyoxyethylene sorbitan monopalmitate, ethoxylated castor oil, and polyethylene glycol are 1.09, 1.05, and 1.27 g/mL respectively, the density of limonene is 0.84 g/mL, and the density of isopropanol is 0.79 g/mL. Therefore, the density of Pursley’s solvent mixture is between 1.05-1.27 g/mL. The density of brine ranges roughly from 1.0-1.2 g/mL. Clearly, given the density values discussed above, the concentration ranges taught by Pursley correspond with wt% values that overlap the ranges claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Pursley suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Pursley. See MPEP 2123.
Claim(s) 20 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pursley (US 2003/0166472 A1) in view of Niraula (Colloids and Surfaces A: Physiochem. Eng. Aspects, 2004, 248, 157-166) and Lowry (Colloids Surf. A Physiochem. Eng. Asp., 2016, 506, 485-494).
The discussion regarding Pursley and Niraula within ¶ 12-17 is incorporated herein by reference.
Regarding Claims 20 and 21, the discussions with respect to claim 2 above is incorporated herein by reference. Pursley differs from the subject matter claimed in that a method of injecting the microemulsions into oil-contaminated aquifers is not described.
Lowry teaches that it was known that microemulsions are suitable for use in remediation of petroleum contaminates in aquifers (Abstract; Page 486). Lowry teaches that microemulsions comprising brine, surfactant, limonene, and isopropanol would be suitable for this purpose (“Methods’” section; Figure 2; Pages 488-494). It would have been obvious to one of ordinary skill in the art to inject Pursley’s microemulsions into oil-contaminated aquifers because doing so would remediate the petroleum contaminates as taught by Lowry.
Claim(s) 1-14, and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hill (WO 2014/153078 A1) in view of Niraula (Colloids and Surfaces A: Physiochem. Eng. Aspects, 2004, 248, 157-166).
Regarding Claims 1, 3-5 and 14, Hill teaches microemulsions comprising surfactant, terpene, and water (Abstract) and describes an embodiment in Example 2 comprising microemulsion of surfactant, isopropanol, and d-limonene diluted by brine (Pages 30-31). Hill teaches the surfactant can be n-alkyloligosides (Page 14, Lines 29-32). Hill differs from the subject matter claimed in that maltoside surfactants are not explicitly described.
Niraula teaches alkyl maltoside surfactants such as dodecyl-B-D-maltoside are known biodegradable surfactants displaying excellent emulsifying characteristics, with a HLB of roughly 13.4 (Abstract; Sections 1.1 and 3.1). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize the maltoside surfactants of Niraula within the microemulsions of Hill because such surfactants are known to give excellent emulsifying characteristics as taught by Niraula.
Regarding Claims 2, Hill teaches single or combinations of surfactants can be used (Page 13, Lines 111-13) and describes embodiments where the surfactants comprise primary alcohol ethoxylates (examples).
Regarding Claims 6, 8, 10, and 13, Hill teaches dilution of 1 gallon per thousand dilutions with brine (Page 31), corresponding with roughly 99.9 wt% of brine. The concentration of surfactant is estimated to be roughly 0.05 wt%.
Hill teaches 1-95 wt% of water such as brine (Page 12, Lines 29-33), 1-99 wt% of terpene such as limonen (Page 12, Lines 8-13), 0-50 wt% of isopropanol (Page 19, Lines 22-33), and above 0 to 99 wt% of surfactant (Page 19, Lines 11-21). Accordingly, Hill is suggestive of overlapping ratios/ranges. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Hill suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Hill. See MPEP 2123.
Regarding Claims 7, 9, 11, and 12, Hill teaches 52.5 wt% of surfactant, 8.75 wt% of isopropanol, and 5 wt% of limonene (Page 31), correspond with surfactant:coupling agent ratio of 6:1 and surfactant+coupling agent:limonene of 12.25:1, equivalent to 49:4.
Regarding Claims 17 and 19, Hill teaches methods of recovering oil comprising injecting the microemulsions into subsurface geological formation (Claim 1). Hill describes an embodiment in Example 2 comprising microemulsion of surfactant, isopropanol, and d-limonene diluted by brine (Pages 30-31). Hill teaches the surfactant can be n-alkyloligosides (Page 14, Lines 29-32). Hill differs from the subject matter claimed in that maltoside surfactants are not explicitly described.
Niraula teaches alkyl maltoside surfactants such as dodecyl-B-D-maltoside are known biodegradable surfactants displaying excellent emulsifying characteristics, with a HLB of roughly 13.4 (Abstract; Sections 1.1 and 3.1). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize the maltoside surfactants of Niraula within the microemulsions of Hill because such surfactants are known to give excellent emulsifying characteristics as taught by Niraula.
Regarding Claim 18, Hill teaches single or combinations of surfactants can be used (Page 13, Lines 111-13) and describes embodiments where the surfactants comprise primary alcohol ethoxylates (examples).
Claim(s) 20 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hill (WO 2014/153078 A1) in view of Niraula (Colloids and Surfaces A: Physiochem. Eng. Aspects, 2004, 248, 157-166) and Lowry (Colloids Surf. A Physiochem. Eng. Asp., 2016, 506, 485-494).
The discussion regarding Hill and Niraula within ¶ 29-37 is incorporated herein by reference.
Regarding Claims 20 and 21, the discussions with respect to claim 2 above is incorporated herein by reference. Hill differs from the subject matter claimed in that a method of injecting the microemulsions into oil-contaminated aquifers is not described.
Lowry teaches that it was known that microemulsions are suitable for use in remediation of petroleum contaminates in aquifers (Abstract; Page 486). Lowry teaches that microemulsions comprising brine, surfactant, limonene, and isopropanol would be suitable for this purpose (“Methods’” section; Figure 2; Pages 488-494). It would have been obvious to one of ordinary skill in the art to inject Hill’s microemulsions into oil-contaminated aquifers because doing so would remediate the petroleum contaminates as taught by Lowry.
Double Patenting
The double patenting rejection is withdrawn in view of the filed terminal disclaimer.
Response to Arguments
Applicant's arguments filed 2/3/2026 have been fully considered but they are not persuasive.
Applicant generally argues Pursley and Hill fail to describe maltoside surfactant. This is not found persuasive as the use of maltoside surfactant would have been obvious in view of Niraula for reasons set forth above.
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 STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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