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 .
Election/Restrictions
Group II (claims 11-20) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/18/2025.
Response to Amendment
The amendment filed on 11/19/2025 has been entered. Claim(s) 1 and 3-10 is/are currently amended. Claim(s) 2 has/have been cancelled. Claim 21 is new. Claim(s) 1 and 3-21 is/are pending with claim(s) 11-20 withdrawn from consideration. Claim(s) 1, 3-10 and 21 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 11/19/2025, with respect to 112(b) rejection has been fully considered and is persuasive. The 112(b) rejection is withdrawn.
Applicant's argument filed on 11/19/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the prior art of Kieffer does not disclose an anionic surfactant used with the claimed nonionic long chain surfactant, as recited in amended claim 1.
In response, Kieffer teaches alkyl benzene sulfonate [0153], which reads on the claimed anionic surfactant.
Applicant argued that the prior art of Kieffer is non-analogous art and is directed toward an entirely different field of endeavor. Kieffer generally pertains to the field of endeavor of surfactant systems and compositions for use as rinse aids on plastics and other wares. The instant application pertains to surfactants used in enhancing oil recovery, particularly from tight oil formations.
In response, the recited field of endeavor is intended use that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III). Since the prior art teaches the same product, the product can be used for the same purpose.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1, 3-10 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kieffer et al (US 20200248099 A1).
Regarding claims 1 and 3, Kieffer teaches a surfactant composition comprising a nonionic surfactant D:
R7-O-(PO)y5(EO)x5(PO)y6
wherein R7 is a branched C8-C16 Guerbet alcohol, x5 is from 5 to 30, y5 is from 1 to 4, and y6 is from 10 to 20 [Table 1, 0053].
The examiner submits that the above R7 overlaps the claimed Cn+1H2n+3CH(Cn+3H2n+7)CH2 with n=1-5, x5 overlapping the claimed y, and (y5 + y6) overlapping the claimed x. A prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (MPEP 2144.05.I).
Kieffer teaches that the composition further comprises an alkyl benzene sulfonate [0153] which reads on the claimed anionic surfactant, as specified in the current claim 3.
The recited “for enhancing oil recovery” is an intended use limitation that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
Regarding claim 4, Kieffer teaches that surfactant D is in the range of 0-80% [Table 1]; and alkyl benzene sulfonate is in the range of 0-80% [0154]. Therefore, the ratio of Surfactant D to alkyl benzene sulfonate is 1:1, falling within the claimed range of 2:5 to 6:1.
Regarding claims 5-8, the recited “the surfactant is dissolved in formation water” is an intended use limitation that imparts no additional structure beyond the claimed nonionic long chain surfactant in claim 1 and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III). Nevertheless, Kieffer teaches a surfactant system with the surfactant dissolved in water [0071], comprising the nonionic surfactant in claim 1 and sodium chloride [0176] which reads on the claimed salt. The sodium chloride is in the range of 0-20% [0176], meeting the claimed range.
Regarding claims 9-10, the recited “the surfactant is further dissolved with 0-5% polymer” is an intended use limitation that imparts no additional structure beyond the claimed nonionic long chain surfactant in claim 1 and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III). Nevertheless, Kieffer teaches a surfactant system with the surfactant dissolved in water [0071], comprising the nonionic surfactant in claim 1 and polyacrylamide [0156] which reads on the claimed polymer. The polymer is 0-5% [0156], meeting the claimed range.
Regarding claim 21, the recited “interfacial tension of the nonionic long chain surfactant is less than 10-3 mN/m” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same nonionic surfactant as the current invention, the recited property is expected to be present.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (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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/JIANGTIAN XU/Primary Examiner, Art Unit 1762