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 .
Status of Claims
Claims 1-11 are pending in the current application.
Claims 1-4 are withdrawn from consideration in the current application.
Claims 5-8 are amended in the current application.
Claims 9-11 are newly added in the current application.
Response to Arguments
Applicant's remarks and amendments filed on November 4, 2025 have been fully considered.
Applicant requests withdrawal of the claim objections and rejections under 35 USC 112(b) set forth in the previous office action.
The claim objections and rejections under 35 USC 112(b) set forth in the previous office action are withdrawn due to the present claim amendments.
Applicant argues that undue experimentation would be required to develop the random bipolymer and process of the claimed invention due to the differences of copolymer synthesis processes and differences in resultant dehydrating properties and dehydrating activity between Hernandez Carbajal and Stephenson.
This is not persuasive for the following reasons. It is noted that the features upon which applicant relies (i.e., copolymer synthesis processes and specific dehydrating properties/activity) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the differences asserted by Applicant are not considered sufficiently significant when combining the applied prior art to arrive at a random acrylate-based bipolymer that renders obvious the claimed invention.
Although Hernandez Carbajal and Stephenson do not disclose identical (meth)acrylate-based copolymers, it is well known and well within the abilities of those skilled in the art to copolymerize various (meth)acrylate monomers to arrive at (meth)acrylate-based copolymers/biopolymers that are suitable for dehydration of crude oil as set forth by Hernandez Carbajal (and also by Stephenson) with a predictable and reasonable expectation of success (Hernandez Carbajal, Abstract, [0002]-[0005], [0067]-[0089]; Stephenson, Cols 1-2 all, general formula; MPEP 2143).
Moreover, note that while Stephenson does not disclose all the features of the presently claimed invention, Stephenson is used as a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the other applied prior art establishes a prima facie case of obviousness over the presently claimed invention. The synthesis processes and property characterizations of Stephenson are not relied upon in the grounds of rejection, but rather, Stephenson teaches that it is well known and well within the abilities of those skilled in the art to utilize hydroxyalkyl acrylate monomers in acrylate-based copolymers to yield an additive for dehazing and dewatering of gasoline and crude oil and demulsifies emulsified water (Stephenson, Col 1 all).
Applicant argues that Stephenson discloses grafted biopolymers that exhibit important differences compared to the claimed random bipolymer.
This is not persuasive for the following reasons. Although Stephenson suggests that polymers can be made from monomers with two or more vinyl unsaturation sites to yield a grafted structure, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123, II. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See MPEP 2123, I. Stephenson provides a broader disclosure that includes polymers that can have a basic random backbone structure as depicted by Stephenson’s general formula without monomers with two or more vinyl unsaturation sites (Stephenson, Col 1 Lines 40-Col 2 Line 20). In view of the foregoing, the differences asserted by Applicant would not have deterred or prohibited those skilled in the art from reading and applying Stephenson’s broader disclosure to Hernandez Carbajal’s random bipolymer.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites “C4H8OH (4-hydroxybutyll).” This contains a typographical error with an extra “l” at the end. Claim 5 should be amended to recite “C4H8OH (4-hydroxybutyl
Appropriate correction is required.
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.
Claims 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hernandez Carbajal et al. (US 2018/0162975 A1) in view of Stephenson (US 5028239 A).
Regarding Claim 5, Hernandez Carbajal teaches a process of dehydrating crude oils by adding a dehydrating agent (demulsifier) into crude oil comprising a random copolymer (random bipolymer) having a structural formula as depicted in scheme (2) and a molecular mass of 1,000 to 180,000 g/mol (Hernandez Carbajal, Abstract, [0002]-[0005], [0067]-[0089], scheme (2)). Hernandez Carbajal’s molecular mass range overlaps the claimed range, and therefore, renders obvious the claimed range (MPEP 2144.05). Hernandez Carbajal teaches R1s and R3s are hydrogen or methyl; R2s include methyl, ethyl, and/or butyl groups; R4s include groups containing a heteroatom of nitrogen such as dimethylaminoethyl; x is a number from 2-900; and y is a number from 2-900 (Hernandez Carbajal, [0070]-[0081]). Hernandez Carbajal’s x and y overlap the claimed ranges of 1-63, and therefore, render obvious the claimed ranges (MPEP 2144.05).
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Hernandez Carbajal – scheme (2)
Hernandez Carbajal remains silent regarding R4 groups that include hydroxymethyl, hydroxyethyl, or other groups recited by claim 1.
Stephenson, however, teaches a (meth)acrylate copolymer utilized as an additive to dehydrate crude oil, where the (meth)acrylate copolymer has a structure depicted by the general formula below (Stephenson, Cols 1-2 all, general formula). Stephenson teaches the copolymer is formed from (meth)acrylate monomers such as butyl acrylate, hydroxyethyl acrylate, and dimethylaminoethyl acrylate (Stephenson, Col 1 Line 40-Col 2 Line 20). Stephenson teaches the copolymer has a molecular mass of less than 100,000 (Stephenson, Col 3 Lines 19-21). Stephenson teaches the copolymer includes butyl acrylate/hydroxyethyl acrylate/methyl methacrylate copolymer, butyl acrylate/butyl methacrylate/hydroxyethyl methacrylate copolymer, and butyl acrylate/hydroxyethyl methacrylate copolymer embodiments that render obvious structural formula (1) of claim 1 (Stephenson, Col 4 Lines 15-35, Col 10 all).
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Stephenson – general formula
Since Hernandez Carbajal and Stephenson both disclose (meth)acrylate-based copolymers for dehydration of crude oil containing (meth)acrylate monomers such as butyl acrylate and dimethylaminoethyl acrylate having similar molecular masses, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Hernandez Carbajal’s R4 groups with Stephenson’s hydroxyethyl groups to yield a copolymer that achieves dehazing and dewatering of gasoline and crude oil and demulsifies emulsified water as taught by Stephenson (Stephenson, Col 1 all).
Regarding Claim 6, modified Hernandez Carbajal teaches the dehydrating agent (demulsifier) random copolymer (random bipolymer) is dissolved in an organic solvent, where the organic solvent includes dichloromethane or methanol (Hernandez Carbajal, [0067]-[0069], [0093]-[0094]).
Regarding Claim 7, modified Hernandez Carbajal teaches the dry synthesized dehydrating agent (demulsifier) random copolymer (random bipolymer) is dissolved in an organic solvent in an amount of 10-50 wt% (Hernandez Carbajal, [0069], [0094]). Modified Hernandez Carbajal’s range falls within the claimed range of 3-55 wt%, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 8, modified Hernandez Carbajal teaches the dehydrating agent (demulsifier) random copolymer (random bipolymer) is dosed at a concentration from 10-2000 ppm (Hernandez Carbajal, [0082], [0094]-[0096]). Modified Hernandez Carbajal’s range is identical to the claimed range of 10-2000 ppm, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 9, modified Hernandez Carbajal teaches the alkyl acrylate monomer used to prepare the random copolymer (random bipolymer) includes methyl acrylate or ethyl acrylate (Hernandez Carbajal, [0081]).
Regarding Claim 10, modified Hernandez Carbajal teaches the hydroxyalkyl acrylate monomer used to prepare the random copolymer (random bipolymer) includes hydroxyethyl acrylate (2-hydroxyethyl acrylate, HEA) (Stephenson, Col 1 Line 40-Col 2 Line 20, Col 4 Lines 15-35, Col 10 all).
Regarding Claim 11, modified Hernandez Carbajal teaches the alkyl acrylate monomer is included in amounts of 60-90 wt%, and the other hydrophilic monomer (2-hydroxyethyl acrylate) is included in an amount of or 10-40 wt% of the copolymer (bipolymer) (Hernandez Carbajal, [0087]-[0089], [0102]; Stephenson, Col 1 Line 32-Col 2 Line 68). Modified Hernandez Carbajal’s ranges both fall within the claimed range of 55-99 wt% and 1-45 wt%, respectively, and therefore, satisfy the claimed ranges (MPEP 2131.03).
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 ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782