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
This is a first action on the merits for this regular application filed on 02/28/2023
Claim Objections
Claims 1-20 are objected to because of the following informalities: The composition and the method claims do not include preambles. It is respectfully requested that the claims be amended to include preambles. Appropriate correction is required.
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.
Claims 12-20 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.
Method claim 12 depends from composition claim 1. The examiner is unable to determine the scope of method claim 12 since it is not positively recited what components of composition claim 1 are or are not included in the method claim. It is respectfully requested that method claim 12 be rewritten in independent form to include all the compounds of composition claim 1.
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (US 10,138,117).
Regarding claim 1, Chen et al. discloses a composition (col.1, lines 23-31), comprising:
2-mercaptobenzothiazole (claim 5; col.6, line 22; the formula shown in claim 1 represents 2-mercaptobenzothiazole);
a cationic surfactant (claim 6; col.6, lines 36-37; benzalkonium chloride is a synonym for benzyl dodecyl dimethyl ammonium chloride; the formula shown in claim 1 represents benzyl dodecyl dimethyl ammonium chloride);
an ammonium salt (ammonium halide in claim 7; col.4, line 59; ammonium fluoride);
a glycol (propylene glycol in claim 8; col.8, line 17; propylene glycol); and
a solvent (col.7, line 60) that comprises water.
Regarding claim 5, Chen et al. teaches the use of 2-mercaptobenzothiazole (col.6, line 22).
Regarding claim 6, Chen et al. teaches the use of benzyl dodecyl dimethyl ammonium chloride as benzalkonium chloride (col.6, lines 36-37).
Regarding claim 7, Chen et al. teaches the use of ammonium halide as ammonium fluoride (col.4, line 59).
Regarding claim 8, Chen et al. teaches the use of propylene glycol (col.8, line 17).
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 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 2-4, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 10,138,117).
Regarding claims 2-4, 9 and 11; Chen et al. discloses various different wt. % concentration values for 2-mercaptobenzothiazole, benzalkonium chloride, ammonium fluoride, propylene glycol, and water (the tables in col.10 through col.11 and Examples 1-3 in columns 14-16).
Chen et al. appears silent to disclose the recited wt. % concentration range values for each of the components of the composition as recited in claims 2-4, 9 and 11.
Chen et al. teaches that the composition can be in diluted form or in concentrated form (col.12, lines (23-54). Clearly one of ordinary skill in the art would readily recognize that Chen et al. wt. % values for each component of the composition will be at higher wt. % values in the concentrated forms such as the wt. % concentration range values in claims 2-4, 9 and 11. 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 to increase the wt.% values of each component of the Chen et al. composition (as in claims 2-4, 9 and 11) in order to provide the composition in concentrated form.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 10,138,117) as applied to claim 9, and further in view of Chen et al. (US 2015/0162213 A1).
Chen et al. (117) discloses a composition that includes 2-mercaptobenzothiazole (claim 5; col.6, line 22; the formula shown in claim 1 represents 2-mercaptobenzothiazole); the cationic surfactant (claim 6; col.6, lines 36-37; benzalkonium chloride is a synonym for benzyl dodecyl dimethyl ammonium chloride; the formula shown in claim 1 represents benzyl dodecyl dimethyl ammonium chloride); and the ammonium salt (ammonium halide in claim 7; col.4, line 59; ammonium fluoride).
Chen et al. (117) appears silent to disclose using ammonium iodide.
Chen et al. (213) discloses an itching composition [0002] that includes 2-mercaptobenzothiazole [0030]; the cationic surfactant benzalkonium chloride is a synonym for benzyl dodecyl dimethyl ammonium chloride [0030]; and ammonium iodide [0037] since ammonium iodide in combination with elemental iodine functions as an oxidizing agent/complexing agent combination [0037]. 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 to add Chen et al. (213) iodine/ammonium iodide combination to Chen et al. (117) composition since the combination functions as an oxidizing agent/complexing agent.
Allowable Subject Matter
Claims 12-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The primary reason for allowance of claim 12 is the inclusion of the step of adding the claimed composition into a first liquid comprising hydrogen sulfide and forming a second liquid, then contacting oil production facilities with the second liquid. The primary reasons for allowance of claims 14 and 18 are the inclusions of the claimed ratio values for hydrogen sulfide to carbon dioxide and the claimed ratio of the 2-substituted benzothiazole to cationic surfactant of ammonium salt.
Claims 13, 15-17 and 19-20 are objected solely due to their dependencies from claims 12, 14 and 18.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONZER R CHORBAJI whose telephone number is (571)272-1271. The examiner can normally be reached M-F 5:30-12:00 and 6:00-9:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jill J Warden can be reached at (571)272-1267. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONZER R CHORBAJI/Primary Examiner, Art Unit 1798