The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant is advised that should claim 20 be found allowable, claim 24 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1, 4-5, 7-20 and 23-24 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention. Claims 1 and 18 require that a percentage of catecholamine-type structures (CTS) are identified or a relative abundance of catecholamine-type structures (CTS) are determined. The CTS is/are selected from the group consisting of compounds having a general formula CxHyNmOx-3 where x is from about 10 to about, 30, y is from about 22 to about 62, and m is from 1 to 2 and compounds having a general formula CxHyOx-3 where x is from about 10 to about 30, y is from about 22 to about 62, and m is from 1 to 2. General formulas CxHyNmOx-3 and CxHyOx-3 constitute new matter. The originally filed specification and claims in both the provisional application and the PCT application from which this application claims benefit have the two general formula written as CxHyNmO3-x and CxHyO3-x. Thus there is no basis in either application for the general formula as currently claimed. Additionally, examiner asks the following question, are there specific chemicals/molecules that applicant is looking at or is it all chemicals within the boundaries of the two general formula of claims 1 and 18? The instant specification contains little if any information that would indicate which peaks of the mass spectra were used, how applicant determined/distinguished between chemicals that can be considered as falling within the catecholamine-type structure language as well as having a molecular formula within the two general formula being claimed. Examiner next attempted to determine what if any structure a catecholamine-type structure should have. In this respect, the only structural information presented in the instant disclosure is the two general formulas being claimed. Thus the instant disclosure fails to give specific examples of what structures constitute a catecholamine-type structure beyond the above molecular formulas. Next, examiner attempted to search for catecholamines as a component of petroleum and/or crude oil. The publication of the instant application was the only document that examiner’s search returned that met that requirement in either the patent literature or the non-patent literature. Thus it appears that applicant is acting as their own lexicographer when it comes to that language. Next examiner attempted to determine the minimum structure that one might expect a catecholamine to have. The cited Oka paper (Chemical and Pharmaceutical Bulletin 1977) teaches the synthesis of rigid catecholamine derivatives and gives the following structure for those compounds:
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. The cited Kerwin paper (Journal of Mass Spectroscopy 1996) teaches some catecholamines and related chemicals derived from the amino acid tyrosine with the following structures:
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. Figure 1 of the cited Vourensola paper gives structures of the following catecholamines and their associated pKa:
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. From the above structures, it appears that catecholamines have at least one nitrogen in their structure and a benzene ring with two hydroxyl groups bonded to adjacent ring carbons. From this, it appears that one of ordinary skill in the art would expect any catecholamine-type structure to have at least these two moieties in their structure.
From the general formula CxHyOx-3 where x is from about 10 to about 30, y is from about 22 to about 62, and m is from 1 to 2. It appears that either applicant intends the catecholamine-type structure to include molecules without the amine nitrogen present or the above structure is not correct. Examiner also searched for the presence of catechols in petroleum and/or crude oil and found that their presence is known and/or expected. Table IV of the Field paper (Industrial and Engineering Chemistry 1940) lists catechol as a phenolic compound that is probably present in petroleum. The Abia thesis used electrospray mass spectrometry to characterize organic acids in petroleum and bio-oil samples. Figure 4.1 of the thesis presents molecular structures of the standards they used. The structures include those of catechol (dihydroxybenzene), methyl catechol, ethyl catechol and dihydroxybenzoic acid. However, the instant disclosure lacks sufficient description to clearly identify what is covered by the term/phrase “catecholamine-type structures”.
Furthermore, examiner attempted to determine if a catechol amine having at least one nitrogen in their structure and a benzene ring with two hydroxyl groups bonded to adjacent ring carbons could meet the general formula requirement of claims 1 and 18. For that purpose, examiner is looking at compound 1 from the structures in the Oka paper described above in which R = H. Without any changes the molecular formula of the compound is C10H13NO3. Using the general formula from claim 1, the minimum molecular formula is C10H22NO7. In other words the Oka catecholamine derivative needs 9 more hydrogens and 4 more oxygens to meet the minimum general formula. The four oxygens can be added by substituting a hydroxyl group for a hydrogen on the four unsubstituted carbons that are bonded to hydrogens, but that does not increase the number of hydrogens. The following is a structure for the general formula C10H21NO7;
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. If one opens up the ring by adding 2 hydrogens across one of the single bonds, one finally gets a molecular formula within the general formula of claims 1 and 18: C10H23NO7. However, this compound’s structure bears little if any resemblance to the starting catecholamine and it fails the double bond equivalent requirement of claim 4. Thus while one of ordinary skill in the art could clearly perform the extractions as described in the instant disclosure, measure the mass spectra of any/all of the different extracts and determine the amount of kaolinite, applicant has failed to sufficiently describe which compounds of the mass spectra are being used to either assess the response of the reservoir rock to low salinity water or determining the reservoir rocks with the probability of a positive response to a low salinity water enhanced oil recovery methods. For these reasons, the claims contain 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, at the time the application was filed, had possession of the claimed invention.
Claims 1, 4-5, 7-20 and 23-24 are rejected under 35 U.S.C. 112(a), as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. With respect to the wands factors, the cited Zhang reference (Energy & Fuels 2011) is a good reference to show the skill on one of ordinary skill in the art and the difficulties faced. Figure 5 of the paper shows negative-ion ESI FT-ICR spectra of a crude oil and 9 different extractions of the oil. From these spectra, it is clear that one of ordinary skill in the art can produce the spectra required by the claims and identify molecular formula with at least some of the more prominent peaks in the spectra. However, most of the spectra include a myriad number of peaks for which only a minimal number were identified and there is a maximal amount of overlap between the signals of the various ions. Thus identifying the signal(s) associated with the various ions representing structures of catecholamine-type structures within the scope of the claimed general formula is not an easy task. Examiner notes that of the structures that were identified by Zhang, none of them has more than two oxygens so that it is not clear if compounds exist in a crude oil that have sufficient oxygen presence to meet the number of oxygens required to be present by the general formula of claims 1 and 18. The instant disclosure does not provide a mass spectrum of any of the extracts used in the claims or any structures that applicant considered to be encompassed by the catecholamine-type structures language scope. Since “catecholamine-type structures” does not appear to be a term of art, it is difficult if not impossible for one of ordinary skill in the art to determine what components of the extract are actually being used in the assessing step of claim 1 or the determining step of claim 18. Additionally as described above with respect to what type of structures could meet the catecholamine-type structures language and how they might need to be modified to fall within the scope covered by one of the general formula of claims 1 or 18, it appears there would be an excessive amount of experimentation required to determine which of the myriad of compounds present in the extract actually need to be used to have a determination or assessment that is actually accurate enough to be useable and/or meet the requirements of these claims.
Claims 1, 4-5, 7-20 and 23-24 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 1 and 18 require that a percentage of catecholamine-type structures (CTS) are identified or a relative abundance of catecholamine-type structures (CTS) are determined. The CTS is/are selected from the group consisting of compounds having a general formula CxHyNmOx-3 where x is from about 10 to about, 30, y is from about 22 to about 62, and m is from 1 to 2 and compounds having a general formula CxHyOx-3 where x is from about 10 to about 30, y is from about 22 to about 62, and m is from 1 to 2. The second general formula, CxHyOx-3 does not have an m in the formula. Thus it is not clear if the m definition is simply not needed or if the m definition is required and the general formula is in error. With respect to claim 1, it is not clear if the first sequentially washing step is a single wash with each solvent or if it is required to sequentially alternate washings with each solvent for a certain number of times or until a certain condition is reached. For example, is a single wash with a defined volume of each solvent sufficient to produce the required extracted formation core? Alternatively, is the single wash with each solvent required to go until a condition such as a clear/colorless liquid starts to come from the core? Since one is looking at enhanced oil recovery with low salinity water, is water within the scope of polar solvents that are useable? Examiner notes that the cited Schwark paper (Organic Geochemistry 1997) teaches that the cores are often crushed and/or ground to a powder prior to extraction of the rock (see the paragraph bridging pages 19-20 of the paper). That paragraph teaches that the crushing/grinding/powdering process can lead to production of new surfaces which leads to the irreversible adsorption of, for instance, NSO compounds (Li et al., 1994) that can influence extraction yields and, apparently, compound distributions. Thus they teach a process to perform the extractions on the whole core. Are the washing steps performed on the whole core or a powder made from the core? Is the washing with a treating solution done with a single treating solution? If so, is there a minimum number of times the washing is performed with a defined volume of the treatment fluid or is the washing performed until a certain condition of the treatment fluid is reached after the washing has been performed? Alternatively, is there a set of treating fluids with different properties that are used? Here again, is there a minimum number of times that the washings are performed, a defined order in which the different treating solutions are used and/or a certain condition required to be reached to end the sequential washings with the treating solutions. The “second series of solvent extracts” language in the generating step does not have antecedent basis. Which formation core is used for the x-ray diffraction step to determine the relative abundance of kaolinite: the original formation core, the extracted formation core or the cleaned formation core? With respect to claim 10, compounds such as dimethyl ether, diethyl ether, a dipropyl ether, a dibutyl ether, methyl ethyl ether, a methyl propyl ether and a methyl butyl ether are outside of the scope of what one of ordinary skill in the art would consider to be an aliphatic cyclic ether as required by claim 9 from which it depends so that it is not clear if applicant is attempting to redefine the scope of an aliphatic cyclic ether from what would typically be considered as an aliphatic cyclic ether or if the claim should be dependent from another claim which does not have that requirement. Alternatively, for example, should claim 9 be dependent on a claim 10 drawn to aliphatic ethers selected from the claimed group rather than the way it is currently? With respect to claim 17, “the high resolution mass spectrometry” does not have antecedent basis. Additionally with respect to claim 18, is there a required set of solvents to form the cleaned rock sample? For example, is sequentially contacting the rock sample with methanol and xylene suitable to obtain the desired result? Alternatively is sequential contact with water and diethyl either suitable to obtain the desired result? Is there a condition that needs to be met (e.g. contacting a certain number of times or until the solvent is clear/colorless after the contacting) to reach the point that the rock is considered to be a cleaned rock sample? As with claim 1, examiner notes that the cited Schwark paper (Organic Geochemistry 1997) teaches that the cores are often crushed and/or ground to a powder prior to extraction of the rock (see the paragraph bridging pages 19-20 of the paper). That paragraph teaches that the crushing/grinding/powdering process can lead to production of new surfaces which leads to the irreversible adsorption of, for instance, NSO compounds (Li et al., 1994) that can influence extraction yields and, apparently, compound distributions. Thus they teach a process to perform the extractions on the whole core. Are the contacting steps of claim 18 performed on the whole core or a powder made from the core? It appears that all solvent extracts are subjected to mass spectrometry, however, if a catecholamine-type structure is found in more than one solvent extract, is it a cumulative of the catecholamine-type structures in the solvent extracts or the catecholamine-type structures in a single solvent extract that is used in the determining step? Is the CTS greater than 25 mol% threshold of the determining step of claim 18 based on all the solvent extracts a single extract having CTS presence, all the extracts with CTS presence or something else? With respect to claim 20, “the high resolution mass spectrometry” does not have antecedent basis. With respect to claim 24, “the HRMS” does not have antecedent basis.
Examiner notes that no art rejection is being made. The art of record fails to teach or fairly suggest the claimed invention. Because of the severity of the rejections under 35 U.S.C. 112(a) outlined above it is unclear whether applicant can overcome those rejections. Therefore a determination of allowable subject matter is not currently possible.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited art is related to various rock extraction procedures and includes a complete copy of the Wicking paper cited by applicant.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Arlen Soderquist whose telephone number is (571)272-1265. The examiner can normally be reached 1st week Monday-Thursday, 2nd week Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571)272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARLEN SODERQUIST/ Primary Examiner, Art Unit 1797