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
Applicant’s election without traverse of Group II (claims 8-11) in the reply filed on 8/20/2025 is acknowledged.
Group I (claims 1-7) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 8/20/2025.
Response to Amendment
The amendment filed on 1/16/2026 has been entered. Claim(s) 1, 6-9 and 11 is/are currently amended. Claim(s) 10 has/have been cancelled. Claims 12-17 are new. Claim(s) 1-9 and 11-17 is/are pending with claim(s) 1-7 withdrawn from consideration. Claim(s) 8-9 and 11-17 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 1/16/2026, with respect to 112(b) rejection has been fully considered and is persuasive. The 112(b) rejection is withdrawn.
Applicant's argument filed on 1/16/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the bipolymer described by Sandoval has different molecular properties, which are clearly observed when applied in crude oil. An example of this is the different dehydrating activity as shown in Figure 1. As reported in Figure 1, KCE random acrylic terpolymers showed a greater demulsification capability than that of simple KC bipolymers because of improved destabilization of the water/crude oil interphase and asphaltene removal because the combined greater hydrophilic interactions of C and E structural units in the terpolymer chains.
In response, firstly, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration (see MPEP 716). Applicant failed to provide a declaration. Therefore, the data (e.g., Figure 1) provided in the argument cannot be considered to traverse the rejection.
Secondly, the prior art structure represented by 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 intend to show criticality or unexpected results of the terpolymer, the unexpected results must be reviewed to see if the results occur over the entire claimed range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. 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). Applicant failed to provide such data.
Applicant argued that to avoid any inconsistency, independent claim 1 (currently withdrawn) and independent claim 8 (currently amended) have been amended to delete all alkoxyalkyl groups from the R1 radical. Therefore, as currently amended, the claimed method involves a random terpolymer having polymeric subunits of x alkyl-acrylate monomers, y carboxyalkyl-acrylate monomers, and z alkoxyalkyl-acrylate monomers. The cited prior art fails to teach or render obvious such a terpolymer and its use in the presently claimed invention.
In response, the amendment deletes all alkoxyalkyl groups from the R1 radical, but still keeps alkoxyalkyl groups in R3. This does not affect the art rejection because the prior art teaches the alkoxyalkyl groups as stated in the 103 rejection.
Applicant argued that even though there is an overlapping in the value, the molecular properties of the terpolymer are utterly different than those of the Sandoval bipolymer, which only includes one hydrophilic structure unit in the random chain. Besides this, a more complex random system is obtained in the terpolymer than that of the bipolymer, even though the same value of the y coefficient is considered.
In response, again the prior art covers both the biopolymer and the terpolymer. Applicant failed to show criticality or unexpected results of the terpolymer.
Applicant argued that the KCE terpolymer of the present invention includes a carboxyalkyl structure in the macromolecular chain, but the main difference between this KCE terpolymer and the KC bipolymer of Sandoval is that in the terpolymer there are two hydrophilic incorporated monomers, with different molecular properties and interactions that, notably, confer to the terpolymer different molecular properties than the bipolymer of Sandoval, in which only the carboxyalkyl monomer is considered. The difference in the KCE and KC interactions with the water drops dispersed in crude oil are clearly shown in Figure 1, where the superior dehydrating activity of the KCE random terpolymer of this invention is compared to that of the KC bipolymer.
In response, again the prior art covers both the biopolymer and the terpolymer. Applicant failed to show criticality or unexpected results of the terpolymer.
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.
Claims [ ] 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.
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
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.
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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