DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 28 July 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Amendment and Arguments
Applicant’s request to update on record of the requested change of Applicant from ChampionX USA Inc. to ChampionX LLC under 37 CFR 1.46(c) has been processed.
Applicant’s amendment does not distinguish from Bennett in view of Tiwari or Bennett in view of Meyer.
Applicant’s arguments have been fully considered but are not persuasive.
Applicant argues that Bennet fails to disclose from 5 wt.% to about 40 wt.% of the iron sulfide dissolver. The examiner disagrees. The examiner acknowledges that Bennett discloses that the amount of the "additional functional agent" other than listed component (a) through (p) will vary according to the particular composition being manufactured and its intended use ([0121]), however, such disclosure does not prevent one of ordinary skill in the art from estimating a range of the amount of the rest of the component based on the disclosed amount of components since the sum of all components will be 100%, , in the instant case, Bennet teaches the corrosion inhibiting component is present in an amount of preferably 15 wt.% ([0086]), the organic solvent component is present in an amount of 40 wt.% ([0103]), thus the amount of the gluconate would be less than 45 wt.% in the composition estimated by the examiner as the sum of all components of the composition will be 100%, which overlaps with the claimed range of claims 47 and 48 and encompasses the claimed range of claim 49.
As to the function of the gluconate, the examiner maintains that Bennet teaches the presence of gluconate, which is the same compound as the claimed iron sulfide dissolver thus inherently capable of dissolving iron sulfide. Indeed, Bennet expressly discloses that the composition is particular useful for removal of deposit formed by hydrocarbon residual and iron sulfide ([0003] and [0020] and [0029]).
As such the rejections over Bennett in view of Tiwari and over Bennett in view of Meyer stand.
Claim Rejections - 35 USC § 103
Claims 40-51 and 53-59 stand rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of Tiwari.
Bennet teaches a composition for removing oilfield hydrocarbon and iron sulfide based deposits and protection against corrosive fluids and gases comprises an imidazolinium based corrosion inhibitor ([0002], [0013] and [0056]), benzyl cocoalkyl(C12-C18)dimethylammonium chloride ([0120], which meets the claimed quaternary ammonium compound of formula(IV), an organic solvent such as ethanol, methanol, ethylene glycol etc. (0104]), a scale inhibitor ([0106]), and a synergistic agent such as 2-mercaptoethanol ([0102], which meets the claimed sulfur-containing compound.
Bennet further teaches that the composition may further comprise a gluconate ([0115]), which meets the claimed iron sulfide dissolver, and alkali hydroxides such as sodium hydroxide ([0106], [0115] and [0118]), thus the presence of sodium gluconate.
Bennet teaches the corrosion inhibiting component is present in an amount of preferably 15 wt.% ([0086]), which meets the claimed range, the organic solvent is present in an amount of 40 wt.% ([0103]), which meets claimed amount , thus the amount of the gluconate would be less than 45 wt.%, estimated by the examiner since the sum of all components of the composition will be 100%, thus a ratio corrosion inhibitor to gluconate is greater than 1:3 (i.e., 15%: <45%), which encompasses the claimed range of iron sulfide dissolver and the ratio of corrosion inhibitor to iron sulfide dissolver, respectively.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the gluconate at the instantly claimed range thus the ratio of corrosion inhibitor to gluconate since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Bennet does not teach the instantly claimed bis-quaternized imidazoline compound of formula (III).
Tiwari teaches a bis-quaternized compound for inhibiting corrosion and/or removing hydrocarbonaceous deposits in oil and gas applications including refinery has the following general formula ( ([0001], [0011]-[0014], [0046],[0059] and formula (I)):
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and exemplified as ([0037]):
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Wherein RT is C17 alkyl ([0037]), which meets the claimed formula (III), wherein R1 and R2 are C17 alkyl, R3 and R4 are -C2H4-, x is 2, y is 1, nis 1, L1 and L2 are both -COOH.
Tiwari further teaches that the compound can be mixed with other quaternary ammonium such as imidazolinium quaternary ammonium compound to provide superior corrosion inhibiting performance with low environment impact ([0010], [0055] and [0057]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the bis-quaternized corrosion inhibitor of Tiwari in the composition of Bennet. The rationale to do so would have been the motivation provided by the teachings of Tiwari that to do so would predictably provide superior corrosion inhibiting performance with low environment impact ([0010]).
Claims 40-51 and 56-57 stand rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of Meyer.
Bennet teaches a composition for removing oilfield hydrocarbon and iron sulfide based deposits and protection against corrosive fluids and gases including in refinery systems comprises an imidazolinium based corrosion inhibitor ([0002], [0013], [0029] and [0056]), benzyl cocoalkyl(C12-C18)dimethylammonium chloride ([0120], which meets the claimed quaternary ammonium compound of formula(IV), an organic solvent such as ethanol, methanol, ethylene glycol etc. (0104]), a scale inhibitor ([0106]), and a synergistic agent such as 2-mercaptoethanol ([0102], which meets the claimed sulfur-containing compound.
Bennet further teaches that the composition may further comprise a gluconate ([0115]), which meets the claimed iron sulfide dissolver, and alkali hydroxides such as sodium hydroxide ([0106], [0115] and [0118]), thus the presence of sodium gluconate.
Bennet teaches the corrosion inhibiting component is present in an amount of preferably 15 wt.% ([0086]), which meets the claimed range, the organic solvent is present in an amount of 40 wt.% ([0103]), which meets claimed amount , thus the amount of the gluconate would be less than 45 wt.%, estimated by the examiner since the sum of all components of the composition will be 100%, thus a ratio corrosion inhibitor to gluconate is greater than 1:3 (i.e, 15%: <45%), which encompasses the claimed range of iron sulfide dissolver and the ratio of corrosion inhibitor to iron sulfide dissolver, respectively.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the gluconate at the instantly claimed range thus the ratio of corrosion inhibitor to gluconate since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Bennet does not teach the instantly claimed bis-quaternized imidazoline compound of formula (III), wherein n is 0 and L2 is H.
Meyer teaches a quaternized compound for inhibiting corrosion in oil and gas applications including refinery operations has the following general formula (col.11, line 60-65 and col.14,line 20-25):
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Meyer further teaches that the compound can be mixed with other quaternary ammonium compound to provide superior corrosion inhibiting performance (col. 11, line 58-65, col.13,line 10-20 and col. 16, line 30-35).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include the quaternized corrosion inhibitor of Meyer in the composition of Bennet. The rationale to do so would have been the motivation provided by the teachings of Meyer that to do so would predictably provide superior corrosion inhibiting performance (col.11, line 58-65), and further since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use, in the instant case, a corrosion inhibitor for oil gas applications and refinery operations. See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988).
Bennet further teaches that the composition can contain sulfonic acid ([0061] and [0080]), which renders the claimed bis-quaternized compound of formula(III) obvious wherein n is 0, L2 is H and R4 is C2 alkylene, as the acid of the composition protonates the tertiary imidazoline nitrogen.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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