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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/11/2026 has been entered.
Response to Amendment
The amendment filed on 5/11/2026 has been entered. Claim(s) 9 is/are currently amended. Claim(s) 1-7 and 10 has/have been cancelled. Claim(s) 8-9 and 11-17 is/are pending and is/are under examination in this office action.
Response to Arguments
The Declaration under 37 CFR 1.132 filed 5/11/2026 is insufficient to overcome the rejection of claims 8-9 and 11-17 based upon 35 U.S.C. 103 as set forth in the last Office action because:
The declarant argued that the KCE terpolymer of the present invention exhibits a higher Log P value (16.38) compared to the KC bipolymer (14.94). The KCE terpolymer displays a less negative hydration energy value (-27.26 kcal/mol) compared to the KC bipolymer (-36.79 kcal/mol). The KCE terpolymer shows faster and more complete water removal compared to the KC bipolymer.
In response, the prior art structure represented by Sandoval formula (2) covers both biopolymers and terpolymers. Therefore, the properties and advantages of the terpolymers recited by the applicant are prima facie obvious. If applicant wants to rebut a prima facie case of obviousness, unexpected results of the terpolymer relative to the biopolymer must be presented (MPEP2144.05.III).
The declarant argued that the data comparing the KCE terpolymer (60/20/20) with the KC biopolymer (60/40) is representative of the claimed invention because it directly demonstrates the effect of including three distinct monomeric types versus only two. The superior properties arise from the structural feature of having three monomeric types, which is the defining characteristic of the claimed terpolymer.
In response, whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); MPEP 716.02(d). In the current case, the ranges in the inventive examples are considerably narrower than the claimed ranges. For example, claim 8 recites “a random terpolymer having a structural formula (1)”. The recited formula (1) covers a wide variety of structures, depending on numerous combinations of R1, R2, R3, R4, R5, R6, x, y and z. However, the examples only employ one terpolymer structure KCE, wherein R1=butyl, R2=2-carboxylethyl, R3= ethylene glycol methyl ether, R4=R5=R6=H (K=butyl acrylate, C=2-carboxylethyl acrylate, and E=ethylene glycol methyl ether acrylate). It is not known if other terpolymers meeting formula (1) would give the same results. Since the examples are not reasonably commensurate with the full scope of claimed materials, and the Applicant has not provided any additional information that would allow one skilled in the art to extend the results associated with the data to the full scope of the claim, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
Applicant's argument filed on 5/11/2026, with respect to 103 rejection has been fully considered but is not persuasive.
The argument based on the Declaration is addressed above.
Applicant argued that Sandoval teaches that the R2 group can be selected from various alkyl groups or various alkoxyalkyl groups, presenting these as alternatives for achieving the same purpose-not as components to be combined. There is no teaching or suggestion in Sandoval that using both an alkyl group and an alkoxyalkyl group simultaneously (thereby creating a terpolymer) would provide any advantage.
In response, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose" In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), MPEP 2144.06.I). Since Sandoval recognized alkyl groups and alkoxyl groups as equivalents for the same purpose as the R2 group, one of ordinary skill at the time of filing would be able to combine alkyl groups and alkoxyl groups in the same copolymer. For example, the copolymer can include methyl group and 2-methoxyethyl group as the R2 group in the above formula (2). The methyl group reads on the claimed R1; and the 2-methoxyethyl group reads on the claimed R3.
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) 8-9 and 11-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sandoval et al (US 20190276750 A1).
Regarding claims 8-9 and 11, Sandoval teaches a method of using copolymers as demulsifier to remove emulsified water in crude oils with densities in the range from 5 to 40° API [0002]. The copolymers are dosed in the range of concentration between 10 to 2000 ppm [claim 9]. The 5 to 40° API overlaps the claimed about 10 to about 40° API. The 10 to 2000 ppm overlaps the claimed about 5 to about 3000 ppm. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
The copolymers have a structure represented by formula (2) [0061],
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200
400
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where R1 and R3 ═H (hydrogen), CH3 (methyl);
R2 =(methyl), C2H5 (ethyl), C4H9 (n-butyl, isobutyl), C6H13 (n-hexyl, iso-hexyl), C8H17 (2 ethyl-hexyl), C8H17 (n-octyl), C10H21 (n-decyl, iso-decyl), C12H25 (n-dodecyl), C18H37 (n-octadecyl), C8H9O (2-phenoxyethyl), C3H7O (2-methoxyethyl), C5H11O2 (2-(2-methoxyethoxy)ethyl);
R4 ═C3H5O2 (carboxyethyl), C4H7O2 (carboxypropyl), C5H9O2 (carboxybutyl);
x=is a number comprised in the range from 4 to 900;
y=is a number comprised in the range from 4 to 900;
“x” and “y” can be random sequences [0062-0070].
The examiner submits that Sandoval recognized alkyl groups (methyl, ethyl, n-butyl, isobutyl, n-hexyl, iso-hexyl, 2-ethyl-hexyl, n-octyl, n-decyl, iso-decyl, n-dodecyl, n-octadecyl) and alkoxyl groups (2-phenoxyethyl, 2-methoxyethyl, 2-(2-methoxyethoxy)ethyl) to be equivalents as R2.
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose" In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), MPEP 2144.06.I). Since Sandoval recognized alkyl groups and alkoxyl groups as equivalents for the same purpose as the R2 group, one of ordinary skill at the time of filing would be able to combine alkyl groups and alkoxyl groups in the same copolymer. For example, the copolymer can include methyl group and 2-methoxyethyl group as the R2 group in the above formula (2). The methyl group reads on the claimed R1; and the 2-methoxyethyl group reads on the claimed R3.
Sandoval’s R4 groups (e.g., carboxyethyl) read on the claimed R2.
The obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9. In the current case, Sandoval discloses methyl group and 2-methoxyethyl group as equally suitable alternatives to one another and therefore recognizes the equivalence of the two groups. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine methyl group and 2-methoxyethyl group in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. As discussed above, Sandoval teach x=4-900. Including methyl group and 2-methoxyethyl group in a 1:1 ratio will result in a composition that includes 2-450 units of methyl group and 2-450 units of 2-methoxyethyl group. The 2-450 units of methyl group falls within the claimed about 1 to about 1220 of x; the 2-450 units of 2-methoxyethyl group falls within the claimed about 1 to about 500 of z.
Sandoval teaches y=4-900 as stated above, overlapping the claimed about 1 to about 500 of y. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Thus, Sandoval’s random copolymer comprising alkyl group, alkoxyl group, and carboxyl group reads on the claimed random terpolymer in claim 8.
Regarding claim 12, Sandoval’s R2 group includes alkyl groups in the recited alkyl acrylate monomer, as stated above.
Regarding claim 13, Sandoval’s R4 group includes carboxyalkyl groups in the recited carboxyalkyl acrylate monomer, as stated above.
Regarding claim 14, Sandoval’s R2 group includes alkoxyalkyl groups in the recited alkoxyalkyl acrylate monomer, as stated above.
Regarding claim 15, It is prima facie obvious for Sandoval’s copolymer to comprise 2-450 units of methyl acrylate; 2-450 units of 2-methoxyethyl acrylate; and 4-900 units of carboxyethyl acrylate, as stated above. Thus, Sandoval’s copolymer comprises 0.09-98 w% of methyl acrylate, 0.15-99 wt% of 2-methoxyethyl acrylate, and 0.59-99 wt% of carboxyethyl acrylate, as calculated by the examiner. These ranges overlap the claimed ranges. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claim 16, Sandoval teaches that the copolymer is formulated as dissolution comprising an organic solvent such as dichloromethane, methanol, ethanol, isopropanol, chloroform, benzene and derivatives, toluene, xylene, and naphtha, in order to be employed as demulsifying agent [0060].
Regarding claim 17, Sandoval teaches that the copolymer is formulated as a dissolution in an amount from about 10 to about 50 wt%, in order to be employed as demulsifying agent.
Conclusion
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.
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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
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