DETAILED ACTION
This action is in response to the amendments and remarks filed 09/15/2025, in which claims 1, 8 and 13 have been amended and claims 1-15 and 17-19 are pending and ready for examination.
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 4 is 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites the limitation “where the at least one zinc sulfide deposition preventer is selected from the group consisting of sodium salts of a phosphorous-based polymer, polymeric ammonium salts, acrylic sulfonate non-ionic terpolymers, modified acrylic acid polymers, and combinations thereof.” However, this conflicts with the limitations limiting the materials of the sulfide deposition preventer as in claim 1 i.e. “where the at least one zinc sulfide deposition preventer is selected from the group consisting of sodium salts of a polymer of 2-propenoic acid, sodium salts of a polymer of sodium ethenesulfonate, sodium salts of a disodium salt-initiated polymer of peroxydisulfuric acid, sodium salts of a polymeric reaction product with tetrasodium ethenylidenebis[phosphonate]. acrylic sulfonate non-ionic terpolymers, 2- propenoic acid, polymers with sodium phosphinate, and combinations thereof.” 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 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 1-3, 7-9, 13-15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0345212 A1 (hereinafter “Legaspi”) in view of WO 2022/251449 A1 (hereinafter “Hurst”).
Regarding Claim 1 Legaspi discloses a method for scavenging hydrogen sulfides (i.e. a sulfur compound) from a fluid comprising hydrocarbon or aqueous streams (Abstract) wherein the fluid may be “mixtures and combinations of water and/or hydrocarbons” used in the production and refining of oil and gas which contain the hydrogen sulfides [0018], the method comprising:
introducing at least one zinc-based sulfur compound scavenger into the fluid wherein the scavengers may be introduced to the fluid in an amount effective to reduce the amount of hydrogen sulfide i.e. by scavenging ([0009], [0017], claim 1) (thus an amount effective to at least partially scavenge the sulfur compound from the fluid, where any amount would effective to at least partially scavenge the sulfur compound from the fluid); and
introducing at least one zinc sulfide deposition preventer into the fluid (i.e. the “architectured materials”, i.e. polymers) wherein the preventer may be introduced to the fluid in an amount effective to reduce the amount of scale or solids formation [0025]-[0026] Claims 17-18, (i.e. an amount effective to at least partially prevent the deposition of zinc sulfide from the fluid, where any amount would effective to at least partially prevent the deposition of zinc sulfide from the fluid).
Legaspi does not disclose (1) specifically injecting the at least one zinc-based sulfur compound scavenger and injecting the at least one zinc sulfide deposition preventer, where injecting the at least one zinc-based sulfur compound scavenger and injecting at least one zinc sulfide deposition preventer occurs in any order or simultaneously, or (2) where the at least one zinc sulfide deposition preventer is selected from the group consisting of sodium salts of a polymer of 2-propenoic acid, sodium salts of a polymer of sodium ethenesulfonate, sodium salts of a disodium salt-initiated polymer of peroxydisulfuric acid, sodium salts of a polymeric reaction product with tetrasodium ethenylidenebis[phosphonate]. acrylic sulfonate non-ionic terpolymers, 2- propenoic acid, polymers with sodium phosphinate, and combinations thereof.
However, with regard to (1) injecting, while Legaspi does not specifically detail how the compounds are introduced to the fluid, the Examiner takes official notice that injecting of chemical compounds is an old and well-known means for introducing said compounds into a fluid body and as such, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method Legaspi by using injecting as the means of introducing the at least one zinc-based sulfur compound scavenger and the at least one zinc sulfide deposition preventer to the fluid being treated. Where necessarily the introduction/injecting of the at least one zinc-based sulfur compound scavenger and injecting at least one zinc sulfide deposition preventer must occurs in any order or simultaneously, as that encompasses all orders of their introduction.
With regard to (2) the zinc sulfide deposition preventer; Hurst discloses scale inhibitor compositions, for use in “fluids such as boiler water, cooling water, seawater (e.g., in oil platform applications), brackish water, oilfield water, municipal treatment plant water, paper mill water, mining water, and industrial treatment plant water”, wherein the scale may be zinc sulfide [0011], wherein suitable scale inhibitors include “2-propenoic acid, telomer with sodium 2-methyl-2-[(l-oxo-2-propen-1-yl)amino]-l-propanesulfonate (1:1) and sodium phosphinite (1:1)”; [0014].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi by additionally including or substituting for the deposition preventer 2-propenoic acid, telomer with sodium 2-methyl-2-[(l-oxo-2-propen-1-yl)amino]-l-propanesulfonate (1:1) and sodium phosphinite (1:1) as disclosed by Hurst because these are compounds known to prevent deposition of solids/scale including zinc sulfide, as is also a goal of Legaspi and it would thus have been obvious to include the scale inhibitors to further prevent scale/solids deposition; and because this involves the simple substitution of known zinc sulfide scale inhibitors to obtain the predictable result of inhibiting zinc sulfide scale formation in a fluid.
Regarding Claim 2 Legaspi in view of Hurst discloses the method of claim 1, where the fluid maybe a mixed production fluid [0018], where the hydrocarbon may be crude oil [0019], and where the water may be “water, brine, seawater” [0020].
Regarding Claim 3 Legaspi in view of Hurst discloses the method of claim 1 where the at least one zinc-based sulfur compound scavenger is selected from the group consisting of a zinc carboxylate, a zinc ammonium carbonate [0017].
Regarding Claim 7 Legaspi in view of Hurst discloses the method of claim 1, where the sulfur compound may comprise H2S [0023].
Regarding Claim 8 Legaspi discloses a method for scavenging hydrogen sulfides (i.e. a sulfur compound) from a fluid comprising hydrocarbon or aqueous streams (Abstract) wherein the fluid may be “mixtures and combinations of water and/or hydrocarbons” used in the production and refining of oil and gas which contain the hydrogen sulfides [0018], the method comprising:
introducing at least one zinc-based sulfur compound scavenger into the fluid wherein the scavengers may be introduced to the fluid in an amount effective to reduce the amount of hydrogen sulfide i.e. by scavenging ([0009], [0017], claim 1) (thus an amount effective to at least partially scavenge the sulfur compound from the fluid, where any amount would effective to at least partially scavenge the sulfur compound from the fluid); where the at least one zinc-based sulfur compound scavenger is selected from the group consisting of a zinc carboxylate, a zinc ammonium carbonate [0017]; and
introducing at least one zinc sulfide deposition preventer into the fluid (i.e. the “architectured materials”, i.e. polymers) wherein the preventer may be introduced to the fluid in an amount effective to reduce the amount of scale or solids formation [0025]-[0026] Claims 17-18, (i.e. an amount effective to at least partially prevent the deposition of zinc sulfide from the fluid, where any amount would effective to at least partially prevent the deposition of zinc sulfide from the fluid).
Legaspi does not disclose (1) specifically injecting the at least one zinc-based sulfur compound scavenger and injecting the at least one zinc sulfide deposition preventer, where injecting the at least one zinc-based sulfur compound scavenger and injecting at least one zinc sulfide deposition preventer occurs in any order or simultaneously, or (2) where the at least one zinc sulfide deposition preventer is selected from the group consisting of sodium salts of a polymer of 2-propenoic acid, sodium salts of a polymer of sodium ethenesulfonate, sodium salts of a disodium salt-initiated polymer of peroxydisulfuric acid, sodium salts of a polymeric reaction product with tetrasodium ethenylidenebis[phosphonate]. acrylic sulfonate non-ionic terpolymers, 2- propenoic acid, polymers with sodium phosphinate, and combinations thereof.
However, with regard to (1) injecting, while Legaspi does not specifically detail how the compounds are introduced to the fluid, the Examiner takes official notice that injecting of chemical compounds is an old and well-known means for introducing said compounds into a fluid body and as such, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method Legaspi by using injecting as the means of introducing the at least one zinc-based sulfur compound scavenger and the at least one zinc sulfide deposition preventer to the fluid being treated. Where necessarily the introduction/injecting of the at least one zinc-based sulfur compound scavenger and injecting at least one zinc sulfide deposition preventer must occurs in any order or simultaneously, as that encompasses all orders of their introduction.
With regard to (2) the zinc sulfide deposition preventer; Hurst discloses scale inhibitor compositions, for use in “fluids such as boiler water, cooling water, seawater (e.g., in oil platform applications), brackish water, oilfield water, municipal treatment plant water, paper mill water, mining water, and industrial treatment plant water”, wherein the scale may be zinc sulfide [0011], wherein suitable scale inhibitors include “2-propenoic acid, telomer with sodium 2-methyl-2-[(l-oxo-2-propen-1-yl)amino]-l-propanesulfonate (1:1) and sodium phosphinite (1:1)”; [0014].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi by additionally including or substituting for the deposition preventer 2-propenoic acid, telomer with sodium 2-methyl-2-[(l-oxo-2-propen-1-yl)amino]-l-propanesulfonate (1:1) and sodium phosphinite (1:1) as disclosed by Hurst because these are compounds known to prevent deposition of solids/scale including zinc sulfide, as is also a goal of Legaspi and it would thus have been obvious to include the scale inhibitors to further prevent scale/solids deposition; and because this involves the simple substitution of known zinc sulfide scale inhibitors to obtain the predictable result of inhibiting zinc sulfide scale formation in a fluid.
Regarding Claim 9 Legaspi in view of Hurst discloses the method of claim 8 where Legaspi discloses the fluid maybe a mixed production fluid [0018], where the hydrocarbon may be crude oil [0019], and where the water may be “water, brine, seawater” [0020].
Regarding Claim 12 Legaspi in view of Hurst discloses the method of claim 8, where the sulfur compound may comprise H2S, Legaspi [0023].
Regarding Claim 13 Legaspi discloses a treated fluid (i.e. sulfur compound scavenged fluid) comprising:
a fluid containing hydrogen sulfide and an additive for scavenging hydrogen sulfide or reducing or inhibiting solids and scale formation wherein the fluid may further include metal - based hydrogen sulfide scavengers (Abstract, [0026]);
wherein the fluid may be “mixtures and combinations of water and/or hydrocarbons” used in the production and refining of oil and gas which contain the hydrogen sulfides [0018].
at least one zinc-based sulfur compound scavenger [0017] wherein the scavengers may be introduced to the fluid in an amount effective to reduce the amount of hydrogen sulfide i.e. by scavenging ([0009], claim 1) (thus an amount effective to at least partially scavenge the sulfur compound from the fluid, where any amount would effective to at least partially scavenge the sulfur compound from the fluid); and
at least one zinc sulfide deposition preventer (i.e. polymers) wherein the preventer may be introduced to the fluid in an amount effective to reduce the amount of scale or solids formation [0025]-[0026] Claims 17-18, (i.e. an amount effective to at least partially prevent the deposition of zinc sulfide from the fluid, where any amount would effective to at least partially prevent the deposition of zinc sulfide from the fluid).
Legaspi does not disclose where the at least one zinc sulfide deposition preventer is selected from the group consisting of sodium salts of a polymer of 2-propenoic acid, sodium salts of a polymer of sodium ethenesulfonate, sodium salts of a disodium salt-initiated polymer of peroxydisulfuric acid, sodium salts of a polymeric reaction product with tetrasodium ethenylidenebis[phosphonate]. acrylic sulfonate non-ionic terpolymers, 2- propenoic acid, polymers with sodium phosphinate, and combinations thereof.
With regard to the zinc sulfide deposition preventer; Hurst discloses scale inhibitor compositions, for use in “fluids such as boiler water, cooling water, seawater (e.g., in oil platform applications), brackish water, oilfield water, municipal treatment plant water, paper mill water, mining water, and industrial treatment plant water”, wherein the scale may be zinc sulfide [0011], wherein suitable scale inhibitors include “2-propenoic acid, telomer with sodium 2-methyl-2-[(l-oxo-2-propen-1-yl)amino]-l-propanesulfonate (1:1) and sodium phosphinite (1:1)”; [0014].
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi by additionally including or substituting for the deposition preventer 2-propenoic acid, telomer with sodium 2-methyl-2-[(l-oxo-2-propen-1-yl)amino]-l-propanesulfonate (1:1) and sodium phosphinite (1:1) as disclosed by Hurst because these are compounds known to prevent deposition of solids/scale including zinc sulfide, as is also a goal of Legaspi and it would thus have been obvious to include the scale inhibitors to further prevent scale/solids deposition; and because this involves the simple substitution of known zinc sulfide scale inhibitors to obtain the predictable result of inhibiting zinc sulfide scale formation in a fluid.
Regarding Claim 14 Legaspi in view of Hurst discloses the sulfur compound scavenged fluid of claim 13, where the hydrocarbon may be crude oil [0019], and where the water may be “water, brine, seawater” [0020].
Regarding Claim 15 Legaspi in view of Hurst discloses the sulfur compound scavenged fluid of claim 13 where the at least one zinc-based sulfur compound scavenger is selected from the group consisting of a zinc carboxylate, a zinc ammonium carbonate [0017].
Regarding Claim 19 Legaspi in view of Hurst discloses the sulfur compound scavenged fluid of claim 13 where the sulfur compound may comprise H2S, Legaspi [0023].
Claims 5-6 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Legaspi in view of Hurst further in view of US 3,928,211 (hereinafter “Browning”).
Regarding Claim 5 Legaspi in view of Hurst discloses the method of claim 1, but is silent to the ratio of the zinc-based sulfur compound scavenger to sulfur compound, and thus does not disclose where the effective amount of the at least one zinc-based sulfur compound scavenger ranges from about 0.25 to about 50 parts zinc to 1 part of the total of sulfur compound.
However Browning discloses a process for scavenging hydrogen sulfide in aqueous drilling fluids, wherein zinc compounds are used including zinc carbonates, and it is disclosed that they may be used at a stoichiometric ratio with regards to the hydrogen sulfide or “preferably, about a 3-to-l metallic complex-to-hydrogen can be utilized for quick and more efficient scavenging” (Abstract, C7/L14-28).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi in view of Hurst by using from 1:1 to 3:1 metallic complex-to-hydrogen (i.e. zinc to hydrogen sulfide) as disclosed by Browning because this is an amount of zinc-based hydrogen sulfide scavenger known in the art to provide a desirable level of zinc scavenging.
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 6 Legaspi in view of Hurst and Browning discloses the method of claim 5, wherein the specific amount of the at least one zinc sulfide deposition preventer is not disclosed and thus does not disclose where the effective amount of the at least one zinc sulfide deposition preventer ranges from about 0.1 to about 50 parts zinc sulfide deposition preventer to parts zinc-based sulfur compound scavenger.
However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding Claim 17 Legaspi in view of Hurst discloses the sulfur compound scavenged fluid of claim 13 but is silent to the ratio of the zinc-based sulfur compound scavenger to sulfur compound, and thus does not disclose where the effective amount of the at least one zinc-based sulfur compound scavenger ranges from about 0.25 to about 50 parts zinc to 1 part of the total of sulfur compound.
However Browning discloses a process for scavenging hydrogen sulfide in aqueous drilling fluids, wherein zinc compounds are used including zinc carbonates, and it is disclosed that they may be used at a stoichiometric ratio with regards to the hydrogen sulfide or “preferably, about a 3-to-l metallic complex-to-hydrogen can be utilized for quick and more efficient scavenging” (Abstract, C7/L14-28).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi in view of Hurst by using from 1:1 to 3:1 metallic complex-to-hydrogen (i.e. zinc to hydrogen sulfide) as disclosed by Browning because this is an amount of zinc-based hydrogen sulfide scavenger known in the art to provide a desirable level of zinc scavenging.
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 18 Legaspi in view of Hurst and Browning discloses the sulfur compound scavenged fluid of claim 17 wherein the specific amount of the at least one zinc sulfide deposition preventer is not disclosed and thus does not disclose where the effective amount of the at least one zinc sulfide deposition preventer ranges from about 0.1 to about 50 parts zinc sulfide deposition preventer to parts zinc-based sulfur compound scavenger.
However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Legaspi in view of Hurst and further in view of US 3,928,211 (hereinafter “Browning”).
Regarding Claim 10 Legaspi in view of Hurst discloses the method of claim 8, but is silent to the ratio of the zinc-based sulfur compound scavenger to sulfur compound, and thus does not disclose where the effective amount of the at least one zinc-based sulfur compound scavenger ranges from about 0.25 to about 50 parts zinc to 1 part of the total of sulfur compound.
However Browning discloses a process for scavenging hydrogen sulfide in aqueous drilling fluids, wherein zinc compounds are used including zinc carbonates, and it is discleod that they may be used at a stoichiometric ratio with regards to the hydrogen sulfide or “preferably, about a 3-to-l metallic complex-to-hydrogen can be utilized for quick and more efficient scavenging” (Abstract, C7/L14-28).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi in view of Hurst by using from 1:1 to 3:1 metallic complex-to-hydrogen (i.e. zinc to hydrogen sulfide) as disclosed by Browning because this is an amount of zinc-based hydrogen sulfide scavenger known in the art to provide a desirable level of zinc scavenging.
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 11 Legaspi in view of Hurst and Browning discloses the method of claim 10, wherein the specific amount of the at least one zinc sulfide deposition preventer is not disclosed and thus does not disclose where the effective amount of the at least one zinc sulfide deposition preventer ranges from about 0.1 to about 50 parts zinc sulfide deposition preventer to parts zinc-based sulfur compound scavenger.
However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Claims 1-4, 7-9, 13-15 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0345212 A1 (hereinafter “Legaspi”) in view of WO 2016/134873 A1 (hereinafter “Wylde”).
Regarding Claim 1 Legaspi discloses a method for scavenging hydrogen sulfides (i.e. a sulfur compound) from a fluid comprising hydrocarbon or aqueous streams (Abstract) wherein the fluid may be “mixtures and combinations of water and/or hydrocarbons” used in the production and refining of oil and gas which contain the hydrogen sulfides [0018], the method comprising:
introducing at least one zinc-based sulfur compound scavenger into the fluid wherein the scavengers may be introduced to the fluid in an amount effective to reduce the amount of hydrogen sulfide i.e. by scavenging ([0009], [0017], claim 1) (thus an amount effective to at least partially scavenge the sulfur compound from the fluid, where any amount would effective to at least partially scavenge the sulfur compound from the fluid); and
introducing at least one zinc sulfide deposition preventer into the fluid (i.e. the “architectured materials”, i.e. polymers) wherein the preventer may be introduced to the fluid in an amount effective to reduce the amount of scale or solids formation [0025]-[0026] Claims 17-18, (i.e. an amount effective to at least partially prevent the deposition of zinc sulfide from the fluid, where any amount would effective to at least partially prevent the deposition of zinc sulfide from the fluid).
Legaspi does not disclose (1) specifically injecting the at least one zinc-based sulfur compound scavenger and injecting the at least one zinc sulfide deposition preventer, where injecting the at least one zinc-based sulfur compound scavenger and injecting at least one zinc sulfide deposition preventer occurs in any order or simultaneously, or (2) where the at least one zinc sulfide deposition preventer is selected from the group consisting of sodium salts of a polymer of 2-propenoic acid, sodium salts of a polymer of sodium ethenesulfonate, sodium salts of a disodium salt-initiated polymer of peroxydisulfuric acid, sodium salts of a polymeric reaction product with tetrasodium ethenylidenebis[phosphonate]. acrylic sulfonate non-ionic terpolymers, 2- propenoic acid, polymers with sodium phosphinate, and combinations thereof.
However, with regard to (1) injecting, while Legaspi does not specifically detail how the compounds are introduced to the fluid, the Examiner takes official notice that injecting of chemical compounds is an old and well-known means for introducing said compounds into a fluid body and as such, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method Legaspi by using injecting as the means of introducing the at least one zinc-based sulfur compound scavenger and the at least one zinc sulfide deposition preventer to the fluid being treated. Where necessarily the introduction/injecting of the at least one zinc-based sulfur compound scavenger and injecting at least one zinc sulfide deposition preventer must occurs in any order or simultaneously, as that encompasses all orders of their introduction.
With regard to (2) the zinc sulfide deposition preventer; Wylde discloses a liquid dissolver composition for sulfide scales particularly suited to oilfield exploration, drilling, production and process systems where sulfide scales have a tendency to form (P1/L-8) which uses a scale inhibitor to prevent deposition of solids, where the scale inhibitor may be sodium vinyl sultanate-acrylic acid-allyl ammonia diphosphonate terpolymer, (P25/L1-28); i.e. a sodium salt of a polymer of 2-propenoic acid.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi by additionally including or substituting for the deposition preventer sodium vinyl sultanate-acrylic acid-allyl ammonia diphosphonate terpolymer as disclosed by Wylde because these are compounds known to prevent deposition of solids, specifically when removing sulfide scales in a fluid for hydrocarbon processing, as is also a goal of Legaspi and it would thus have been obvious to include the scale inhibitors to further prevent scale/solids deposition; and because this involves the simple substitution of known zinc sulfide scale inhibitors to obtain the predictable result of inhibiting zinc sulfide scale formation in a fluid.
Regarding Claim 2 Legaspi in view of Wylde discloses the method of claim 1, where the fluid maybe a mixed production fluid [0018], where the hydrocarbon may be crude oil [0019], and where the water may be “water, brine, seawater” [0020].
Regarding Claim 3 Legaspi in view of Wylde discloses the method of claim 1 where the at least one zinc-based sulfur compound scavenger is selected from the group consisting of a zinc carboxylate, a zinc ammonium carbonate [0017].
Regarding Claim 4 Legaspi in view of Wylde discloses the method of claim 1, wherein the at least one zinc sulfide deposition preventer is sodium vinyl sultanate-acrylic acid-allyl ammonia diphosphonate terpolymer (supra), i.e. which is a sodium salt of a phosphorous-based polymer, a polymeric ammonium salt, an acrylic sulfonate non-ionic terpolymer, and a modified acrylic acid polymer.
Regarding Claim 7 Legaspi in view of Wylde discloses the method of claim 1, where the sulfur compound may comprise H2S [0023].
Regarding Claim 8 Legaspi discloses a method for scavenging hydrogen sulfides (i.e. a sulfur compound) from a fluid comprising hydrocarbon or aqueous streams (Abstract) wherein the fluid may be “mixtures and combinations of water and/or hydrocarbons” used in the production and refining of oil and gas which contain the hydrogen sulfides [0018], the method comprising:
introducing at least one zinc-based sulfur compound scavenger into the fluid wherein the scavengers may be introduced to the fluid in an amount effective to reduce the amount of hydrogen sulfide i.e. by scavenging ([0009], [0017], claim 1) (thus an amount effective to at least partially scavenge the sulfur compound from the fluid, where any amount would effective to at least partially scavenge the sulfur compound from the fluid); where the at least one zinc-based sulfur compound scavenger is selected from the group consisting of a zinc carboxylate, a zinc ammonium carbonate [0017]; and
introducing at least one zinc sulfide deposition preventer into the fluid (i.e. the “architectured materials”, i.e. polymers) wherein the preventer may be introduced to the fluid in an amount effective to reduce the amount of scale or solids formation [0025]-[0026] Claims 17-18, (i.e. an amount effective to at least partially prevent the deposition of zinc sulfide from the fluid, where any amount would effective to at least partially prevent the deposition of zinc sulfide from the fluid).
Legaspi does not disclose (1) specifically injecting the at least one zinc-based sulfur compound scavenger and injecting the at least one zinc sulfide deposition preventer, where injecting the at least one zinc-based sulfur compound scavenger and injecting at least one zinc sulfide deposition preventer occurs in any order or simultaneously, or (2) where the at least one zinc sulfide deposition preventer is selected from the group consisting of sodium salts of a polymer of 2-propenoic acid, sodium salts of a polymer of sodium ethenesulfonate, sodium salts of a disodium salt-initiated polymer of peroxydisulfuric acid, sodium salts of a polymeric reaction product with tetrasodium ethenylidenebis[phosphonate]. acrylic sulfonate non-ionic terpolymers, 2- propenoic acid, polymers with sodium phosphinate, and combinations thereof.
However, with regard to (1) injecting, while Legaspi does not specifically detail how the compounds are introduced to the fluid, the Examiner takes official notice that injecting of chemical compounds is an old and well-known means for introducing said compounds into a fluid body and as such, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method Legaspi by using injecting as the means of introducing the at least one zinc-based sulfur compound scavenger and the at least one zinc sulfide deposition preventer to the fluid being treated. Where necessarily the introduction/injecting of the at least one zinc-based sulfur compound scavenger and injecting at least one zinc sulfide deposition preventer must occurs in any order or simultaneously, as that encompasses all orders of their introduction.
With regard to (2) the zinc sulfide deposition preventer; Wylde discloses a liquid dissolver composition for sulfide scales particularly suited to oilfield exploration, drilling, production and process systems where sulfide scales have a tendency to form (P1/L-8) which uses a scale inhibitor to prevent deposition of solids, where the scale inhibitor may be sodium vinyl sultanate-acrylic acid-allyl ammonia diphosphonate terpolymer, (P25/L1-28); i.e. a sodium salt of a polymer of 2-propenoic acid.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi by additionally including or substituting for the deposition preventer sodium vinyl sultanate-acrylic acid-allyl ammonia diphosphonate terpolymer as disclosed by Wylde because these are compounds known to prevent deposition of solids, specifically when removing sulfide scales in a fluid for hydrocarbon processing, as is also a goal of Legaspi and it would thus have been obvious to include the scale inhibitors to further prevent scale/solids deposition; and because this involves the simple substitution of known zinc sulfide scale inhibitors to obtain the predictable result of inhibiting zinc sulfide scale formation in a fluid.
Regarding Claim 9 Legaspi in view of Wylde discloses the method of claim 8 where Legaspi discloses the fluid maybe a mixed production fluid [0018], where the hydrocarbon may be crude oil [0019], and where the water may be “water, brine, seawater” [0020].
Regarding Claim 12 Legaspi in view of Wylde discloses the method of claim 8, where the sulfur compound may comprise H2S, Legaspi [0023].
Regarding Claim 13 Legaspi discloses a treated fluid (i.e. sulfur compound scavenged fluid) comprising:
a fluid containing hydrogen sulfide and an additive for scavenging hydrogen sulfide or reducing or inhibiting solids and scale formation wherein the fluid may further include metal - based hydrogen sulfide scavengers (Abstract, [0026]);
wherein the fluid may be “mixtures and combinations of water and/or hydrocarbons” used in the production and refining of oil and gas which contain the hydrogen sulfides [0018].
at least one zinc-based sulfur compound scavenger [0017] wherein the scavengers may be introduced to the fluid in an amount effective to reduce the amount of hydrogen sulfide i.e. by scavenging ([0009], claim 1) (thus an amount effective to at least partially scavenge the sulfur compound from the fluid, where any amount would effective to at least partially scavenge the sulfur compound from the fluid); and
at least one zinc sulfide deposition preventer (i.e. polymers) wherein the preventer may be introduced to the fluid in an amount effective to reduce the amount of scale or solids formation [0025]-[0026] Claims 17-18, (i.e. an amount effective to at least partially prevent the deposition of zinc sulfide from the fluid, where any amount would effective to at least partially prevent the deposition of zinc sulfide from the fluid).
Legaspi does not disclose where the at least one zinc sulfide deposition preventer is selected from the group consisting of sodium salts of a polymer of 2-propenoic acid, sodium salts of a polymer of sodium ethenesulfonate, sodium salts of a disodium salt-initiated polymer of peroxydisulfuric acid, sodium salts of a polymeric reaction product with tetrasodium ethenylidenebis[phosphonate]. acrylic sulfonate non-ionic terpolymers, 2- propenoic acid, polymers with sodium phosphinate, and combinations thereof.
With regard to the zinc sulfide deposition preventer; Wylde discloses a liquid dissolver composition for sulfide scales particularly suited to oilfield exploration, drilling, production and process systems where sulfide scales have a tendency to form (P1/L-8) which uses a scale inhibitor to prevent deposition of solids, where the scale inhibitor may be sodium vinyl sultanate-acrylic acid-allyl ammonia diphosphonate terpolymer, (P25/L1-28); i.e. a sodium salt of a polymer of 2-propenoic acid.
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi by additionally including or substituting for the deposition preventer sodium vinyl sultanate-acrylic acid-allyl ammonia diphosphonate terpolymer as disclosed by Wylde because these are compounds known to prevent deposition of solids, specifically when removing sulfide scales in a fluid for hydrocarbon processing, as is also a goal of Legaspi and it would thus have been obvious to include the scale inhibitors to further prevent scale/solids deposition; and because this involves the simple substitution of known zinc sulfide scale inhibitors to obtain the predictable result of inhibiting zinc sulfide scale formation in a fluid.
Regarding Claim 14 Legaspi in view of Wylde discloses the sulfur compound scavenged fluid of claim 13, where the hydrocarbon may be crude oil [0019], and where the water may be “water, brine, seawater” [0020].
Regarding Claim 15 Legaspi in view of Wylde discloses the sulfur compound scavenged fluid of claim 13 where the at least one zinc-based sulfur compound scavenger is selected from the group consisting of a zinc carboxylate, a zinc ammonium carbonate [0017].
Regarding Claim 19 Legaspi in view of Wylde discloses the sulfur compound scavenged fluid of claim 13 where the sulfur compound may comprise H2S, Legaspi [0023].
Claims 5-6 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Legaspi in view of Wylde further in view of US 3,928,211 (hereinafter “Browning”).
Regarding Claim 5 Legaspi in view of Wylde discloses the method of claim 1, but is silent to the ratio of the zinc-based sulfur compound scavenger to sulfur compound, and thus does not disclose where the effective amount of the at least one zinc-based sulfur compound scavenger ranges from about 0.25 to about 50 parts zinc to 1 part of the total of sulfur compound.
However Browning discloses a process for scavenging hydrogen sulfide in aqueous drilling fluids, wherein zinc compounds are used including zinc carbonates, and it is discleod that they may be used at a stoichiometric ratio with regards to the hydrogen sulfide or “preferably, about a 3-to-l metallic complex-to-hydrogen can be utilized for quick and more efficient scavenging” (Abstract, C7/L14-28).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi in view of Wylde by using from 1:1 to 3:1 metallic complex-to-hydrogen (i.e. zinc to hydrogen sulfide) as disclosed by Browning because this is an amount of zinc-based hydrogen sulfide scavenger known in the art to provide a desirable level of zinc scavenging.
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 6 Legaspi in view of Wylde and Browning discloses the method of claim 5, wherein the specific amount of the at least one zinc sulfide deposition preventer is not disclosed and thus does not disclose where the effective amount of the at least one zinc sulfide deposition preventer ranges from about 0.1 to about 50 parts zinc sulfide deposition preventer to parts zinc-based sulfur compound scavenger.
However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding Claim 17 Legaspi in view of Wylde discloses the sulfur compound scavenged fluid of claim 13 but is silent to the ratio of the zinc-based sulfur compound scavenger to sulfur compound, and thus does not disclose where the effective amount of the at least one zinc-based sulfur compound scavenger ranges from about 0.25 to about 50 parts zinc to 1 part of the total of sulfur compound.
However Browning discloses a process for scavenging hydrogen sulfide in aqueous drilling fluids, wherein zinc compounds are used including zinc carbonates, and it is discleod that they may be used at a stoichiometric ratio with regards to the hydrogen sulfide or “preferably, about a 3-to-l metallic complex-to-hydrogen can be utilized for quick and more efficient scavenging” (Abstract, C7/L14-28).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi in view of Wylde by using from 1:1 to 3:1 metallic complex-to-hydrogen (i.e. zinc to hydrogen sulfide) as disclosed by Browning because this is an amount of zinc-based hydrogen sulfide scavenger known in the art to provide a desirable level of zinc scavenging.
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 18 Legaspi in view of Wylde and Browning discloses the sulfur compound scavenged fluid of claim 17 wherein the specific amount of the at least one zinc sulfide deposition preventer is not disclosed and thus does not disclose where the effective amount of the at least one zinc sulfide deposition preventer ranges from about 0.1 to about 50 parts zinc sulfide deposition preventer to parts zinc-based sulfur compound scavenger.
However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Legaspi in view of Wylde and further in view of US 3,928,211 (hereinafter “Browning”).
Regarding Claim 10 Legaspi in view of Wylde discloses the method of claim 8, but is silent to the ratio of the zinc-based sulfur compound scavenger to sulfur compound, and thus does not disclose where the effective amount of the at least one zinc-based sulfur compound scavenger ranges from about 0.25 to about 50 parts zinc to 1 part of the total of sulfur compound.
However Browning discloses a process for scavenging hydrogen sulfide in aqueous drilling fluids, wherein zinc compounds are used including zinc carbonates, and it is discleod that they may be used at a stoichiometric ratio with regards to the hydrogen sulfide or “preferably, about a 3-to-l metallic complex-to-hydrogen can be utilized for quick and more efficient scavenging” (Abstract, C7/L14-28).
Therefore, before the effective filing date, it would have been prima facie obvious to one of ordinary skill in the art to modify the method of Legaspi in view of Wylde by using from 1:1 to 3:1 metallic complex-to-hydrogen (i.e. zinc to hydrogen sulfide) as disclosed by Browning because this is an amount of zinc-based hydrogen sulfide scavenger known in the art to provide a desirable level of zinc scavenging.
Since the range disclosed overlaps the range claimed, the range recited in the claim is considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 11 Legaspi in view of Wylde and Browning discloses the method of claim 10, wherein the specific amount of the at least one zinc sulfide deposition preventer is not disclosed and thus does not disclose where the effective amount of the at least one zinc sulfide deposition preventer ranges from about 0.1 to about 50 parts zinc sulfide deposition preventer to parts zinc-based sulfur compound scavenger.
However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Response to Arguments
Applicant's arguments filed 09/15/2025 have been fully considered but they are now moot because they are directed in their entirety to grounds of rejection which are no longer cited in the current action and the new limitations of the amended claims which had not been previously addressed. See the updated rejection above citing a new combination of references to address the amended claims.
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 Eric J. McCullough whose telephone number is (571)272-8885. The examiner can normally be reached Monday-Friday 10:00-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
Prosecution Insights