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 .
Response to Amendment
Applicant's arguments filed 9/19/2025 have been fully considered but they are not persuasive. This case has been inherited by a different examiner and during further search and consideration additional art was found. This action is being sent second nonfinal to provide this new rejection below.
Regarding the 35 USC 112b rejection of claim 1, applicant’s still have not provided a plasma generator in claim 1. Thus, the rejection of Claim 1 under 35 U.S.C. 112(b) is maintained. Given the clear description in the disclosure as original filed of the system and method requiring generation of a plasma (see detailed write-up in the nonfinal dated 6/27/2025, it is unclear whether the phrase "high-voltage electrode" is necessarily limited to an electrode connected to a source of high voltage electrical energy and a plasma tube electrically connected to ground.
Regarding the rejection of claims 1 and 5 under 35 USC 112(b) regarding the “flowing water”, this rejection has been overcome by applicant’s amendments.
Regarding the rejection of claim 23 under 35 USC 112(b) regarding the “produced water”, this rejection has been overcome by applicant’s amendments.
Regarding the rejection of claim 12 under 35 USC 112(d), this rejection has been overcome by applicant’s amendments.
Regarding the drawing and specification objections. they are withdrawn in light of applicant’s remarks.
Regarding the rejection of claims 14 and 21 under 35 USC 112(a), this rejection has been overcome by applicant’s amendments.
Applicant’s remarks concerning the 35 102(a)(1) rejection of claims 17 are not persuasive. This rejection is maintained. Applicant’s remark are directed to the intended use of the device, i.e. “flow of an oxidant gas…..” The structural limitations of the claim are the plasma generator, plasma treatment vessel and plasma tube. Please note that there is no structure regarding an inlet or outlet, pump, etc. Thus, absent additional structural limitations setting the device apart from the prior art, if the prior art has the recited structure, it has the ability to perform the intended use absent additional structural limitations setting the structure apart. Additionally, Cho et al. (US20230242420) is used below and does have holes #185 that allow for gas subjected to high voltage electrodes to be in contact with water.
Lastly regarding claims 1 and 23, if the method is directed to removing flow assurance chemicals, there should be a method step directed to the actual removal. It appears that a “plasma-treated oxidant gas is created by the high-voltage electrode and the gas is injected into the produced water where the plasma-treated oxidant gas reacts with produced water to contribute to the decomposition process [0022]. Additionally, it is unclear from applicant’s claim language weather it is the plasma-treated gas or whether the HV electrodes inserted into the produced water is actually removing the assurance chemicals based on the current claim language. At any point in time there is some amount of air flowing through the device. It appears that applicant’s invention is something as follows, but would still need clarification because at any point in time there is some amount of air around the electrode and it would logically follow that a small amount would be included in the process:
A method for removing flow assurance chemicals from a produced water, comprising;
generating a plasma-treated gas in a plasma reactor;
the plasma reactor comprising inserting a plasma tube into a plasma treatment vessel;
placing a high-voltage electrode in the plasma tube;
flowing a gas through the plasma tube and generating the plasma-treated oxidant gas,
flowing the plasma-treated oxidant gas into the produced water wherein the plasma-treated oxidant gas removes the flow assurance chemicals from the produced water to form a treated water.
It is also unclear regarding claim 1 and claim 13, what is doing the treating. Claim 1 recites that the gas is charged by the high voltage electrode and the gas circulates through the produced water. However, then dependent claim 13 recites that the plasma is generated in the produced water. Thus leading to confusion as to what method is being claimed. Are applicant’s using the injected gas, i.e. plasma-treated gas, to treat the produced water or are they using the high voltage electrode to create gas bubbles in the produced water, i.e. plasma treat the produced water directly? If the latter is true, then there is air in Kim (previously cited reference) flowing all around the high voltage electrode and also in Cho (previously cited) and the air bubbles created by a plasma generator in either reference would show gas flows in and around the produced water and the plasma device and the water is treated.
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.
Claim(s) 1, 23, and any claims that depend therefrom 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. Given the clear description in the disclosure as original filed of the system and method requiring generation of a plasma, it is unclear whether the phrase "high-voltage electrode" is necessarily limited to an electrode connected to a source of high voltage electrical energy and a plasma tube electrically connected to ground. There is no recitation of a plasma generator/reactor in claim 1 that would allow for the actual generation of plasma.
Additionally, claims 1 and 23 and those that depend on are rejected because the preamble is not commensurate in scope with the claim itself. If the method is directed to removing flow assurance chemicals, there is no method step directed to the actual removal which renders the claim indefinite. It appears that a “plasma-treated oxidant gas is created by the high-voltage electrode and the gas is injected into the produced water where the plasma-treated oxidant gas reacts with produced water to contribute to the decomposition process [0022].
Claim 1 and 13 and those that depend therefrom are also rejected as indefinite. It is unclear regarding claim 1 and claim 13 what is doing the treatment. Claim 1 recites that the gas is charged by the high voltage electrode and the gas circulates through the produced water which causes treatment. However, then dependent claim 13 recites that the plasma is generated in the produced water. Thus leading to confusion as to what method is being claimed. Are applicant’s using the injected gas, i.e. plasma-treated gas, to treat the produced water or are they using the high voltage electrode to create gas bubbles in the produced water, i.e. plasma treat the produced water directly? If the latter is true, then there is air in Kim (previously cited reference) flowing all around the high voltage electrode and also in Cho (previously cited) and the air bubbles created by a plasma generator in either reference would show gas flows in and around the produced water and the plasma device and the water is treated. Thus, claims 1 and 13 appear to contradict themselves leaving the method unclear as to what the treatment is doing and the method is unclear/indefinite.
Claim 19 is indefinite as claim 17 already recites a plasma tube and treatment vessel and plasma generator, thus what is claim 19 adding? It appears that claim 19 adds an additional plasma generator, i.e. plasma gas reactor. It is unclear what figure or where in the specification this is recited? From the specification, it appears that the vessel and tube have gas flowing around an electrode and the high voltage from the electrode charges that gas creating a plasma-treated gas. It is unclear why there would be an additional plasma-gas reactor as recited in claim 19? Thus, it is unclear how claim 19 further limits claim 17 if the structure already recited in claim 17 is the reactor?
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 17, 19, 20, 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (Plasma discharge article noted in 6/27/2025 nonfinal).
Claim construction note: While claim 17's preamble recites the intended use of
the system, i.e., for the removal of hydrate inhibitors from produced water, the intended
use of a system is not structurally limiting of the system absent express limitation of the
claimed system to one comprising in addition to the structures of the device itself, also
the identity of eh articles worked upon by the device, e.g., as in this case, "produced
water comprising hydrate inhibitors." In its current form, therefor, the "system" claim is
treated as a device not limited by either produced water generally, produced water
comprising hydrate inhibitors more specifically, and the intended use of the device is not
limiting of the structural attributes (limitations) of the device.
Turning now to application of the prior art, Kim describes a "coaxial electrode"
device (e.g., Electrode A), and a corresponding method of use, for plasma discharges in
produced water using a high-voltage electrode ("HV electrode") placed within an
electrically grounded tube ("Ground electrode").
A system which does not expressly comprise "produced water" generally or "produced water containing hydrate inhibitors" more specifically.
Kim teaches that a coaxial type electrode, e.g., "Electrode A" picture above, may be partially inserted into a tank containing produced water. Applicant's "plasma treatment vessel" reads on Kim's tank containing produced water. Air which contains oxygen is added to the gap between the two electrodes withing the grounded electrode tube.
Lastly, it is also noted that "Expressions relating the apparatus to contents thereof during an intended operation a device is of no significance in determining patentability of the apparatus claim." Exparte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Young, 75 F.2d * > 996 , 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458,459 (CCPA 1963)). Therefore, a claim to an analyte measuring device which includes limitations to the solutions run through the device and the solutions formed within the device do not, without more, make the claim patentable. MPEP 2115.
Claims 1, 3-8, 10, 12, 13, 15, 17, 19 and 20 are rejected under 35 U.S.C. 102(a)(2) as being unpatentable over Cho (US20230242420).
Regarding claims 1, 5 and 19, Cho teaches a method for removing chemicals from a produced water stream (fracking) [0011]. Cho teaches the use of a high voltage electrode #180 [0044] located in a plasma tube #190+#110 (entire device can read on tube), wherein a gas is flowed through the tube and exits through holes #185 toward the produced water which is treated by plasma. Cho teaches a plasma reactor [0041].
Regarding claims 3, 4, 6 and 7, Cho teaches the use of air (or gas) [0046]. Air contains oxygen, which is an oxidant.
Regarding claims 8 and 20, Cho teaches using an insulating barrier around the discharge electrode [0012].
Regarding claim 10, Cho teaches the use of pulsed or arc discharge [0007-11].
Regarding claim 12, Cho teaches flowing the fluid (see fig. 1) which reads on a continuous process [0048].
Regarding claim 13, Cho teaches generating the plasma in liquid [0034].
Regarding claim 15, Cho teaches removing hydrocarbons, corrosion in inhibitors, i.e. oil products, [0003].
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 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 23 is rejected under 35 U.S.C. 102(a)(2) as being unpatentable over Cho (US20230242420) in view of Foret (US20150041454).
Regarding claim 23, Cho teaches a method for removing chemicals from a produced water stream (fracking) [0011]. Cho teaches the use of a high voltage electrode #180 [0044] located in a plasma tube #190+#110 (entire device can read on tube), wherein a gas is flowed through the tube and exits through holes #185 toward the produced water which is treated by plasma. Cho teaches a plasma reactor [0041].
Cho does not specifically teach the use of adding metal ions.
However, Foret also teaches plasma treatment of water and teaches using metal ions to enhance oxidation [0124].
Therefore, it would have been obvious to one skilled in the art before the effective file date to seed the produced water with a metal ion in Cho as taught by Foret in order to enhance oxidation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER M DIETERLE whose telephone number is (571)270-7872. The examiner can normally be reached M-Th 9:30-5:30 EST.
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/Jennifer Dieterle/Supervisory Patent Examiner, Art Unit 1776
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