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 .
Response to Arguments
Applicant's arguments filed December 2, 2025 have been fully considered but they are not persuasive.
The amendments are insufficient to address each of the prior 112 rejections and present further 112 issues. See 112 rejections herein.
It is noted that applicant has not provided for the specific text of the originally filed specification that supports each of the claim amendments. Instead, states “support for these amendments can be found, at least, in the original claims and in paragraphs [0029], [0038], and [0057] of the originally-filed specification.”
The examiner disagrees because none of such referenced paragraphs and original claims describe/recite “an automated sample tray that holds a plurality of samples, each having an initial weight, and inserts each of the samples to the sample chamber in sequence” as now recited in claim 1. While the publication in paragraph [0033] discloses “the system 100 may include a sample tray 170, holding one or more samples”, the examiner fails to locate any description of an “automated” sample tray and such sample tray comprising any structural element that can provide for any automation operation of the sample tray including inserting each of the samples in the sample chamber in sequence”. There is no such automated sample tray that can perform such disclosed/described in the originally filed specification and claims as asserted by applicant.
Therefore, the claims are directed to new matter.
Applicant states:
“Applicant respectfully asserts that the terms in the amended claims are readily recognized to one having ordinary skill in the art. In the Office Action, the Examiner contends that conventional known oven is known to be for cooking (kitchen oven, microwave, toaster oven, etc.). Applicant respectfully disagrees. When a term is not defined in the claim, it should be interpreted based on the specification. The original application clearly discloses that the claimed invention related to oilfield applications, and a person having ordinary skill in the art (i.e. in oilfield) would understand that the claimed "oven" does not refer to a cooking device.”
The examiner disagrees. It is noted that applicant has elected to only address some of the examples of known structures stated by the examiner that could be considered as an “oven” as recited in claim the claims. “Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim.” . MPEP 2111.01 Plain Meaning II. Therefore, limitations recited in the specification, but not claimed will not be read into the claims.
“An applicant is entitled to be their own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the relevant time.” MPEP 2111.01 Plain Meaning III. A.
In the instant application, applicant has not provided for any limiting, specialized definition in the specification that states an “oven” means/is… Furthermore, the claims do not provide for any specific definition nor specific elements of such oven. Instead, the oven is only claimed has having the ability “to heat the sample chamber from room temperature to an elevated temperature higher than the room temperature, and the sample chamber is configured to hold an elevated pressure higher than atmosphere pressure”. Any structure that capable of such is equivalent to the claimed oven. A conventionally know oven for cooking also has such ability. Furthermore, there is nothing precluding one from choosing to employ the claimed oven for “cooking”. The apparatus claim does not mention any “oilfield” nor would such “oilfield” provide for any structural element the claimed apparatus. The term “oilfield” is directed to intended use. There is no requirement for the apparatus to ever be used in any process at all, including relative to any “oilfield” as may be intended by applicant. The apparatus is defined by the positively claimed structural elements listed on separate indented lines in the body of the claim after the transitional phrase, “comprising”, not by any possible uses, process steps that can be, may be performed, included that as may intended by applicant. Furthermore, the method claim 9 does not require the use of the same system of claim 1 nor does claim 9 mention any oilfield nor requires any of the steps to be performed relative to any “oilfield “.
As to the terms “scale”, “corrosion inhibitor”, “chelating agent”, and other such terms, the terms are broad and ambiguous. The examiner maintains that such are not defined in the claims as being any specific substance, material, chemical, nor state of matter. What may prevent/inhibit corrosion something in one environment/situation may not do so in another. None of the terms are limited to any definitions provided for by the Schlumberger Oilfield Glossary website.
As to the art rejections directed to both the apparatus and method claims, applicant states:
“Without acquiescing to the Examiner's position, independent claim 1 is amended to recite, inter alia, "the system treats the plurality of the samples by immersing each of the plurality of the samples in one of the treatment compositions and dissolving a portion of each of the samples under the elevated temperature and the elevated pressure, obtaining a plurality of treated samples each having a final weight, and determines an optimized treatment composition by comparing the final weight of each of the treated samples with the initial weight of each of the samples." De Wolf and Netzsch, whether considered separately or in combination, fail to teach at least this required limitation of amended independent claim 1, as explained below.”
The examiner respectfully disagrees. The entire last paragraph, referenced passage of claim 1, is directed to intended use, process steps. The passage does not provide for any further structural element of the claimed invention, “the system” (defined in the by the positively claimed structural elements). Instead, the passage recites what the entire invention, the system, can be used to do relative to the a plurality of samples and treatment compositions (both unspecified and not positively claimed as structural elements of the invention). As noted above, the claim is directed to an apparatus defined by the positively claimed elements listed in the claim, not by any intended, possible process steps of use with any unclaimed materials/structures. There is no requirement for nor indication that any positively claimed element(s) can actually perform each of the recited steps.
The language of the apparatus claim, positively claimed structural elements listed as defining the apparatus, must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Here, applicant has not provided for any such structural difference. There is nothing precluding an owner, user, possessor, etc. of the apparatus as provided for by De Wolf employing such apparatus in a process of performing the recited intended use steps recite in claim 1. Therefore, the argument directed to intended possible use of performing process steps is not commensurate in scope with the apparatus claims and is not found persuasive.
The examiner fails to locate any description of any of the actual positively claimed structural elements (one or more containers, oven, sample chamber, and sample tray) recited in claim 1 as defining the invention is structurally capable of performing forming treatment compositions, supplying the treatment compositions to the sample chamber, immersing…, dissolving…, obtaining…, determining…and comparing process steps recited in claim 1.
Furthermore, the examiner fails to locate any description in the specification of a control unit configured to control [an] amount of each of the one or more fluids supplied to the sample chamber as now recited in amended claims 7 and 15. This is also not consistent with original claims 7 and 15. Therefore, claim 7 and 15 are directed to new matter.
The claims are rejected as given herein.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: There is no description of the matter as provided for in the amended claims as indicated as new matter. See prior remarks above and the rejections herein.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention apparatus and method is defined by the positively claimed elements/steps, the structural elements/steps listed on separate indented lines listed in the body of the claims after the transitional phrase, “comprising”.
A claim is only limited by positively claimed elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”. MPEP 2115 Material or Article Worked Upon by Apparatus.
It is noted that claim 1 mentions “a plurality of samples” and “treatment compositions”. However, such are defined as being any specific materials, chemicals, substances, etc. and are not positively claimed as structural elements of the invention. The prior are considered as materials/articles that can possibly be, intended be worked upon, used with the invention.
It is noted that the phrases “one or more” and “at least one” only require 1.
It is noted that a “plurality” only requires two.
It is noted that the claims are replete with “configured to…” clauses. However, such clauses do not provide for any further structures/structural elements. Such clauses are directed to intended/possible uses.
Furthermore, it is noted the “sample chamber” and “oven” are not structurally defined by any specific structures. The term “sample” does not provide for any further structure of the chamber. In other words, the name of the chamber does not structurally defined the chamber. It is noted that conventional known oven is known to be for cooking (kitchen oven, microwave, toaster oven, etc.). However, here this does appear to be the case. It is noted that what is illustrated as oven 150 does not appear to be consistent with that known in the art to be considered as an oven. Any structure that can provide heat and or be heated can be considered as oven. An incubator, autoclave, furnace, heater, etc. can be considered as ovens. Furthermore, the sample chamber 140 is not illustrated as being disposed in oven 150 (See Figure 1). See also claim 9.
It is noted that “a liquid” is not specified as being any specific liquid and a sample is not specified as being any specific substance, material, chemical, nor state of matter.
It is noted that the passage in claim 1 beginning with “one or more of liquids from the one or more containers form…” does not provide for any further structural element of the invention. There is no requirement for any forming of any treatment compositions (unspecified and not positively claimed) and supplying of the treatment compositions to the sample container to ever be performed.
As to claims 1, 9, and 12-13 it is noted that the claims do not provide for who or what is required to perform each of the recited steps. There is nothing precluding some steps from being performed manually and/or mentally (determining, optimizing, comparing, etc.). If applicant intends for each of the steps to be performed by and/or using specific structure(s), then the claims should clearly recite such.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7 and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. While the publication in paragraph [0033] discloses “the system 100 may include a sample tray 170, holding one or more samples”, the examiner fails to locate any description of an “automated” sample tray and such sample tray comprising any structural element that can provide for any automation operation including inserting each of the samples in the sample chamber in sequence”. There is no such automated sample tray that can perform such disclosed as asserted by applicant. The examiner fails to locate any description of any of the actual positively claimed structural elements (one or more containers, oven, sample chamber, and sample tray) recited in claim 1 as defining the invention is structurally capable of performing forming treatment compositions, supplying the treatment compositions to the sample chamber, immersing…, dissolving…, obtaining…, and determining process steps recited in claim 1.
Furthermore, the examiner fails to locate any description in the originally filed specification of a control unit configured to control [an] amount of each of the one or more fluids supplied to the sample chamber as now recited in amended claims 7 and 15. This is also not consistent with original claims 7 and 15. The control unit is not capable of supplying and controlling such as claimed.
Therefore, the claims are directed to new matter.
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 1-5, 7, 9-13, and 15 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.
The term “controlled manner” in claim 1 is a relative term which renders the claim indefinite. The term “controlled manner” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Although no generating of heat is required to be performed, the claim does not provide for what is considered as generating heat by the oven in a control manner. What may be considered as “in a controlled manner” to one person may not be considered as such by another and vice versa.
As to claim 1, it is unclear what is structurally required of the tray to be considered as “automated” because the tray is not claimed as comprising any structural element that can provide for any automation, automated operations. The tray is not required to comprise any element capable of providing any motive force to itself nor any sample to insert any sample in the sample chamber and the tray is not required to be structurally connected to the sample chamber. Furthermore, it is unclear if it is intended for the automated tray to comprise, contain a plurality of samples (unspecified) because the “that holds” clause does not require such. If applicant intends for the tray to comprise/contain a plurality of samples or the system to comprise a plurality of samples on, contained in the sample tray, then the claim should clearly recite such. It is presumed, that the phrase “and inserts…” is directed to the automated sample tray. If so, the claim should clearly recite such. However, applicant should also see the prior remarks above directed to the “automated sample tray”.
As to claims 1-2, 7, 9-10, and 15, it is unclear which/what sample/samples is/are being referenced the respective phrases “the samples” and “the sample” recited throughout the claims because claims 1 and 9, respectively previously recite “a plurality of samples”.
Although, it is only required that one container be present. However, if there is more than one container present, then it is unclear if all of such containers are required to contain the same a liquid or different liquids because the claim does not recite such. (Also applicable to claim 9).
Claim 1 recites the limitation "one or more of the liquids" in first line of the next-to-last paragraph. There is insufficient antecedent basis for this limitation in the claim. As noted above, “one or more containers, each of the at one or more containers containing a liquid” only requires the presence of one container containing one liquid because “a liquid” is a singular (one liquid). Even if there is more than one container present each container is not required to contain different liquids. Each container as recited in the claim contains a (same) liquid. Therefore, there is no prior basis for “the liquids”. If applicant intends for one container to be present and the one container to contain a plurality of liquids or more than one container to be present and each of the one or more containers contains a different liquid, then the claim should clearly recite such.
Therefore, although no treatment composition is required to be formed, it unclear how a single liquid in a single container or a same liquid contained in more than one container can “form treatment compositions”. A single liquid is just the same liquid. There is no requirement for anything to be done (mixing, combining, reacting, subjecting any liquid(s) to any processes in the one required container nor any other positively claimed element) for the “a liquid” to form a treatment composition. The claim is directed to the structural elements positively claimed in the claim. The claim only requires for one container containing a (one) liquid to be present.
Although no forming of any treatment compositions is required to occur, it is unclear if such treatment compositions are intended to be made/formed using a plurality of liquids from a plurality of containers of the claim or if the claim is renaming the one liquid of the one container as “a treatment composition”. If the latter, such renaming does not further define the one, single liquid. It is unclear what is the nexus of the one liquid to the treatment compositions (what the treatment compositions comprise) and if such compositions are intended be elements of the invention, and where are such treatment compositions are located relative to the positively claimed elements because the claim does not clearly recite such.
For reasons stated above, the language employed in the claim is vague, ambiguous, unclear and confusing.
The claim appears to require that the one liquid be capable of dissolving the unknown, unspecified samples. There is no requirement for any sample to ever actually be dissolved in the one liquid in the one container. Claim 1 is directed to an apparatus not a process.
As to claim 1, in the last passage, it is unclear what is the nexus of “the plurality of the samples” and “the plurality of samples” because it is unclear if the prior is intended to be the same as the latter. If so, then the prior phrase is grammatically incorrect. If different, then there is no prior antecedent basis for “the plurality of the samples” (such phrase is vague, ambiguous, and confusing).
As to claim 1, although no treatment/treating of any samples is required to be performed, it is unclear what/which treated samples are being referenced by “the treated samples” in the next-to-last line of claim 1, because the claim previously recites “a plurality of treated samples”.
The term “optimized treatment” in claims 1 and 9 is a relative term which renders the claim indefinite. The term “optimized treatment” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As noted above, there is no requirement for the apparatus of claim 1 to be used to perform any process step, including making any determination of any “optimized treatment composition”. However, there is no in claim in claim 1 nor claim 9 as to what is required of an unknown, undefined treatment composition to be considered as “optimized” nor how any comparison of any ratio of vague, unknown, unspecified initial and final weight values provides for, define any such determination of what is an “optimized treatment composition”. There is no recitation of any relative basis that provides for a clear and definitive indication as to what is required of a composition, what such composition has to comprise/contain to be considered as an “optimized treatment composition”. A composition that may be considered as “optimized” to one person may not be considered as such to another and vice versa. One can subjectively label, categorize, or refer to any composition as an “optimized treatment composition”.
Dependent claims 2-5, 7, 10-12, and 15 are rejected via dependency upon a rejected claim.
As to claims 3, it is unclear what is the nexus of “the liquid in each of the one or more containers” to the “oner or more of the liquids” recited in claim 1. See also the rejection of claim 1 directed to such.
Claim 7 and 15 recite the limitation " the one or more fluids supplied to the sample chamber". There is insufficient antecedent basis for this limitation in the claim. Furthermore, as noted above, claims 1 and 7 are directed to an apparatus not a process. There is no requirement for any supplying of any fluids to the sample chamber to be performed.
It is noted that claims 9-13 and 15 employ the same or similar language as claims 1-5 and 7. Therefore, applicant should see applicable rejections above.
As to claim 9, it is unclear where and how the forming treatment compositions occurs because as noted above relative to claim 1, the method also only requires the use of one container and one liquid. It is unclear how one liquid is considered a treatment composition(s). Renaming a single one liquid as a treatment composition does not further limit the one liquid. Furthermore, it is unclear what is the nexus, location of such treatment compositions to the one or more containers and further recited structures. If applicant intends for a plurality of compositions to be formed by combining, mixing, etc. a plurality of liquids from a plurality of containers in specific structures then the claim should clearly recite such. Furthermore, it is unclear in what the treatment compositions are located , in what structure(s) the immersing of samples is required to occur because the claim does not clearly recite such. See also prior remarks/rejections directed to claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, and 7 is/are rejected under 35 U.S.C. 102(a)(1),(a)(2) as being anticipated by De Wolf et al., US 20130264060.
De Wolf discloses a system (see Fig, 3; Example 4), comprising: one or more containers, each containing a liquid (paragraph 0156); an oven (paragraph 0148); and a sample chamber disposed in the oven,
wherein a sample having an initial weight is disposed in the sample chamber, the oven is configured to heat the sample chamber to an elevated temperature, and the sample chamber is configured to hold an elevated pressure, and one or more of the liquid from the one or more containers form a treatment solution that is configured to dissolve a portion of the sample under the elevated temperature and the elevated pressure (see paragraphs 0148, 151).
As to claims 2, De Wolf discloses scale (paragraphs 007, 09-11, 22) and sludge (paragraphs 0043-45).
As to claim 3, De Wolf discloses a corrosion inhibitor and acid. (abstract; paragraph 0008, 09, 25).
As to claim 4, De Wolf discloses a gas cylinder containing nitrogen. (Figure 3).
As to claim 5, De Wolf discloses a fraction collector (collection vial) that can collect an effluent.
As to claim 7, De Wolf discloses controlling pressure and temperature. (paragraph 0119, 133-135, 139, 147-148, Table 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Phipps, Jonathan; Kshirsagar; Manjiri T. et al.; Blount, David H.; Tanimoto, Noriyuki et al.; Sklenak; John S. et al. disclose devices and methods for heating and weighing samples.
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 BRIAN R GORDON whose telephone number is (571)272-1258. The examiner can normally be reached M-F, 8-5:30pm; off every other Friday..
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, Charles Capozzi can be reached at 571-270-3638. 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.
/BRIAN R GORDON/Primary Examiner, Art Unit 1798