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 .
Claim Status
Claims 14-19 are pending:
Claims 1-13 and 20 have been cancelled.
Claims 14-19 are rejected.
Response to Amendments
Amendments filed 02/02/2026 have been entered. Amendments to the claims overcome §102 rejection but do not overcome double patenting rejections and §103 rejections as previously set forth in non-final Office mailed 10/01/2025.
Amendments have necessitated new grounds of rejection using prior art of record.
Response to Arguments
Arguments filed 02/02/2026 have been entered. Arguments were fully considered.
On pg. 4 of Applicant’s arguments, Applicant argues that:
Rejection of Claims Under35 USC §102
Claim 14 stands rejected under 35 USC §102 over Reiser. In view of the amendments to claim 14 to incorporate elements of claim 16 therein, Applicants respectfully submit that the rejection of claim 14 under 35 USC §102 is overcome and must be withdrawn.
This argument is persuasive therefore the §102 rejection is withdrawn.
On pg. 4 of Applicant’s arguments, Applicant argues that:
Rejections of Claims Under 35 USC §103
Claims 18 and 19 stand rejected under 35 USC § 103 as being unpatentable over Reiser in view of U.S. Pre-Grant Pub. No. 2012/0018387 to Solomon. Notably, claims 15 and 16 are free but for the obviousness-type double patenting rejection over the '829 patent. With claim 14 being amended to incorporate elements of claim 16 therein, Applicants respectfully submit that claim 14 now presents patentable subject mailer over the prior art, particularly over Reiser. In particular, within the teachings of Reiser, it is critical that an emulsion of oleaginous material be formed by aspirating liquid oleaginous material into a moving stream of water (see ABSTRACT of Reiser). Conversely, claim 14 as amended recites the film-forming composition to be in a solid form chosen from granules or pellets. The Examiner has already recognized this distinguishing feature of the recited subject mailer as being distinct from the teachings of Reiser such that Applicant respectfully submits that claim 14, as amended, presents patentable subject matter over the cited art. Applicant respectfully submits that the remaining claims all depend
from allowable claim 14 such that all presented claims are in condition for allowance.
This argument is not persuasive because amended claim 14 includes only a portion of claim 16. Original claim 16 included all the limitations of claims 14 and 15. The scope of amended claim 14 was not previously considered and broader than original 16 therefore claim 14 presents new issues which necessitates new search and consideration.
With respect to Applicant’s arguments that “claim 14 now presents patentable subject mailer over the prior art, particularly over Reiser. In particular, within the teachings of Reiser, it is critical that an emulsion of oleaginous material be formed by aspirating liquid oleaginous material into a moving stream of water (see ABSTRACT of Reiser)”, this argument is not persuasive because the active material in Reiser is normally solid and can be powdered, melted or dissolved (Reiser, see C2/L35-45, C6/L45-55, C6/L70-75 and C9/L15-30). While Reiser does not teach explicitly teach applying the composition in the form of granules or pellets, these solid forms are conventionally well known in the art; specifically, Solomon teaches that the solid composition may be of any form including granular form (see ¶463).
Furthermore, as stated in ¶27 of the instant specification, the film-forming composition is in liquid form or solid form; therefore, solid form in either as a pellet or granule does not offer any new or unexpected results.
The §103 rejection of Reiser in view of Solomon is maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14-16 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,370,829. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims read on the instant claims.
Regarding claim 14, the patent claims recite a method of managing an oilfield water storage system (see patent claims 1 and 13), wherein the method comprises: applying a film-forming composition comprising a surface spreading agent to a water holding pond of the oilfield water storage system (see patent claims 1 and 13), wherein the film-forming composition is in a solid form chosen from granules or pellets (this feature is either obvious or anticipated by the patent claims, see patent claims 1-13).
Regarding claim 15, the patent claims recite the method of claim 14, wherein applying a film-forming composition comprises applying the film-forming composition further comprising a dissolution agent and a densifying agent (see patent claim 13), wherein the densifying agent has a density greater than water and also greater than the surface spreading agent to provide the film-forming composition with a density greater than water (see patent claim 13).
Regarding claim 16, the patent claims recite the method of claim 15, wherein the film-forming composition is applied to release at least a portion of the surface spreading agent from beneath a surface of the water in the water holding pond (see patent claim 5).
Regarding claim 18, the patent claims recite the method of claim 14, further comprising applying a buoyant, water soluble indicator (a dissolution agent chosen from calcium hydroxide, hydrated lime, or a combination thereof, see patent claims 5 and 13) different from the film-forming composition to a surface of the water after applying the film-forming composition to the water holding pond (see patent claims 5 and 13).
Regarding claim 19, the patent claims recite the method of claim 18, wherein the buoyant, water soluble indicator is applied at least 30 minutes after applying the film-forming composition to the water holding pond (this limitation is obvious in light of “wherein the film-forming composition includes a sufficient amount of the densifying agent to render the film-forming composition denser than water” as recited in claims 5 and 13; the application time is a result effective variable).
The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,370,829 in view of Reiser (USPN 3,528,764) and by evidence of Noweck (Encyclopedia of Industrial Chemistry, see NPL attached in 892). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims read on the instant claims.
Regarding claim 17, the patent claims recite the method of claim 16.
The patent claims do not recite the step of adding a surface protectant agent to the water holding pond, wherein the surface protectant agent has a specific gravity lower than that of the surface spreading agent and wherein the surface protectant agent forms a surface protectant layer over the surface spreading layer in the water storage pond.
In a related field of endeavor, Reiser teaches a method and apparatus for retarding evaporation from water surfaces (see ABS) comprising the step of adding a surface protectant agent (oleaginous material is a fatty alcohol having from 14 to 22 carbon atoms, see C3/L1-10) to the water holding pond (aspirating liquid oleaginous material into a moving stream of water to disperse the oleaginous material therein), wherein the surface protectant agent has a specific gravity lower than that of the surface spreading agent (oleaginous which is a fatty alcohol having 14-22 carbon atoms has a density < 1 g/cm3 by evidence of Noweck; see Table 1 for density of fatty alcohols having 6-22 C atoms and §2.1 on pg. 118 of Noweck) and wherein the surface protectant agent forms a surface protectant layer over the surface spreading layer in the water storage pond (this is an inherent characteristic of the oleaginous material).
It would have been obvious to one of ordinary skill in the effective filing date of the invention to modify the method of the patent claims by incorporating a surface protectant agent (i.e. oleaginous material) as disclosed by Reiser because it provides the benefit of stabilizing oil-and-water mixtures.
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 14 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Reiser (USPN 3,528,764) in view of Solomon (US 2012/0018387).
Regarding claim 14, Reiser teaches a method of managing an oilfield water storage system (on-land and open water sites, see ABS), wherein the method comprises: applying a film-forming composition comprising a surface spreading agent (individual particulate aggregations of the composition, complemented by enhanced film-spreading capability of an amorphous form of the higher fatty alcohol constituent) to a water holding pond of the oilfield water storage system (on-land and open water sites, see ABS).
Reiser suggests that the composition can be applied in a solid form (see C2/L35-45, C6/L45-55, C6/L70-75 and C9/L15-30); however does not explicitly teach the composition as a granule or pellet.
In a related field of endeavor, Solomon teaches a method for controlling water evaporation (see ABS) wherein the solid composition may be of any form including granular form (see ¶463).
It would have been obvious to one of ordinary skill in the effective filing date of the invention to modify the composition of the Reiser by applying the composition in granular form as disclosed by Solomon because solid forms typically more compact which allow for ease of transport and reduce storage costs. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding claim 18, Reiser teaches the method of claim 14.
Reiser does not teach the step of applying a buoyant, water soluble indicator different from the film-forming composition to a surface of the water after applying the film-forming composition to the water holding pond.
In a related field of endeavor, Solomon teaches a method for controlling water evaporation (see ABS) comprising the step of applying a buoyant, water soluble indicator (hydrated lime, see ¶411) different from the film-forming composition to a surface of the water after applying the film-forming composition to the water holding pond (the water soluble indicator in light of the instant specification can be hydrated lime therefore would be different than the film-forming composition recited in the claims and different than what is disclosed by Reiser).
It would have been obvious to one of ordinary skill in the effective filing date of the invention to modify the method of the Reiser by incorporating a buoyant, water soluble indicator (i.e. hydrated lime) of Solomon because it is aids in controlling the undesirable growth of algae in the water body.
Regarding claim 19, the combination of Reiser and Solomon teaches the method of claim 18.
The combination of Reiser and Solomon does not teach wherein the buoyant, water soluble indicator is applied at least 30 minutes after applying the film-forming composition to the water holding pond.
It would have been obvious to one of ordinary skill in the effective filing date of the invention to modify the method of the Reiser (as modified by Solomon) by incorporating the buoyant, water soluble indicator is applied at least 30 minutes after applying the film-forming composition to the water holding pond because it is obvious to optimize the application effectiveness to efficiently control the amount of algae growth in the water body with a reasonable expectation of success. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
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 EKANDRA S. MILLER-CRUZ whose telephone number is (571)270-7849. The examiner can normally be reached M-Th 7 am - 6 pm EST.
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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.
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/EKANDRA S. MILLER-CRUZ/Primary Examiner, Art Unit 1773