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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1–16 in the reply filed on December 05, 2025 is acknowledged.
Specification
The amendments to the specification dated December 05, 2025 are accepted.
Claim Rejections - 35 USC § 112(b)
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 4–8 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.
Claim 4 recites:
4. The system of claim 3, wherein the oil recirculation stream is combined with the VRU oil output upon or before entering the heater treater. Emphasis added.
Regarding claim 4, the limitation of the oil recirculation stream—“is combined with the VRU oil output”—is a positive method limitation of using the system (instead of a mere capability). The claim is to an apparatus (the “system”). Therefore claim 4 is indefinite because it is a single claim which claims both an apparatus and the method steps of using the apparatus. The claim is indefinite because it is unclear whether infringement would occur when a system is created that allows the oil recirculation stream to be combined with the VRU oil output, or whether infringement would require that the oil recirculation stream is actually combined with the VRU oil output. See MPEP 2173.05(p), subsection II (a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite). To overcome this rejection, claim 4 could be rewritten as:
4. The system of claim 3, wherein the system is operable to combine the oil recirculation stream
Claims 5–8 are indefinite because they depend from claim 4.
Also, claim 5 recites:
5. The system of claim 4, wherein the live crude oil includes an oil component, and wherein the system yields an oil volumetric production rate output, measured in barrels per day (BPD), that is greater than a volumetric production rate, measured in BPD, of the oil component of the live crude oil. Emphasis added.
Claim 5 is indefinite because it is a single claim which claims both an apparatus and the method steps of using the apparatus, as the italicized limitation is a positive method step for operating the system (instead of a mere capability). See MPPE 2173.05(p), subsection II. To overcome this rejection, claim 5 could be amended to read:
5. The system of claim 4, wherein the system is operable such that the live crude oil includes an oil component, and wherein the system is operable to yield
Claim 6 is indefinite because it depends from claim 5.
Claim Rejections - 35 USC § 103
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.
Claims 1, 2 and 11–15 are rejected under 35 U.S.C. 103 as being unpatentable over Cummings, US 4,124,496 in view of Rajewski, US 5,980,737.
Regarding claim 1, Cummings teaches an arrangement for producing tankerable crude oil from well stream fluid. See Cummings Fig. 3, col. 7, ll. 4–11. The arrangement reads on the claimed “system for conditioning live crude oil.”
The arrangement comprises a high pressure separator 42 (the “separator”) operable to produce oil sent to line 112 (the “separator oil output”) and gas sent to line 130 (the “separator gas output”) from well stream fluid containing crude oil sent to separator 42 through pipe 100 (the “live crude oil”). See Cummings Fig. 3, col. 6, ll. 33–36, col. 7, ll. 18–29, col. 8, ll. 35–43.
The arrangement also comprises a medium pressure separator 46 (the “stabilizer tower”) operable to receive the “output oil” from line 112 and to receive gas from low pressure separator 50 from line 154 and gas/liquid mixing device 48 (the gas is the “heater treater gas output”), produce an oil output sent to line 120 (the “stabilizer tower oil output”) and produce gas sent to line 136 (the “stabilizer tower gas output”). See Cummings Fig. 3, col. 6, ll. 24–64, col. 7, ll. 3–11.
The arrangement further comprises a low pressure separator 50 (the “heater treater,” as explained in more detail below) operable to receive the “stabilizer tower oil output” from line 120, produce a liquid oil output sent to line 128 (the “heater treater oil output”) and produce a gas output sent to line 154 (the “heater treater gas output”). See Cummings Fig. 3, col. 6, ll. 24–31, col. 7, ll. 3–17.
The “heater treater oil output” at line 128 is a “stabilized oil stream,” as claimed, because it is tankerable crude oil. See Cummings Fig. 3, col. 7, ll. 3–11.
PNG
media_image1.png
615
791
media_image1.png
Greyscale
Cummings differs from claim 1 because it is silent as to the low pressure separator 50 comprising a heating mechanism, and therefore fails to provide enough information to teach the low pressure separator 50 being a “heater treater,” as claimed. But the low pressure separator 50 is provided to separate fluid into a gas phase and a liquid oil phase. See Cummings Fig. 3, col. 7, ll. 3–11. Also, the fluid being treated is wax-containing oil. Id. at col. 9, ll. 26–31.
With this in mind, Rajewski teaches a separator vessel comprising a line for introducing oil into the vessel with the line having a heater to heat the oil as it enters the separator vessel. See Rajewski col. 3, ll. 11–22. Heating the oil in this manner is beneficial to enhance oil/gas separation and reduces wax build up. Id.
It would have been obvious for the low pressure separator 50 of Cummings to comprise a heater to heat the fluid entering the separator 50 to enhance oil/gas separation and reduce wax build up. With this modification, the low pressure separator 50 reads on the “heater treater” because it would have a heater to heat the fluid being treated in the separator 50.
Regarding claim 2, Cummings teaches that the assembly further comprises a “vapor recovery unit (VRU)” comprising compressor 56, LPG separation unit 58, pipeline gas separation unit 60 and plant fuel gas separation unit 62. See Cummings Fig. 3, col. 6, ll. 30–32, col. 8, ll. 28–31. The “VRU” is operable to receive the “stabilizer tower gas output” at lines 136, 142. Id. The “VRU is also operable to produce gas outputs at lines 164, 172 and 174 (any of which read on the “VRU gas output”). Id. at Fig. 3, col. 7, ll. 12–17, col. 8, ll. 35–54, col. 9, ll. 9–13. The “VRU” is further operable to produce an oil output at lines 166 and 180, either of which reads on the “VRU oil output.” Id. at Fig. 3, col. 8, ll. 51–54, col. 9, ll. 1–13.
Regarding claim 11, Cummings teaches that the assembly is operable to provide the gas output from the high pressure separator 42 (the “separator gas output”) to a user (as it is “for export” via line 172) and to the medium pressure separator 42 (the “stabilizer tower”) via line 180. See Cummings Fig. 3, col. 8, ll. 35–54.
Regarding claim 12, Cummings teaches that the assembly further comprises a well head operable to feed the live crude stream to the high pressure separator 42 (the “separator”), as claimed. See Cummings col. 1, ll. 31–35.
Regarding claim 13, Cummings teaches that the gas separation unit 60 of the “VRU” is operable to produce a conditioned gas to a user, as claimed, because the gas separation unit 60 sends gas through pipeline 172 “for export.” See Cummings Fig. 3, col. 8, ll. 43–46.
Regarding claim 14, Cummings teaches that the “VRU” comprises compressor 56, as claimed. See Cummings Fig. 3, col. 6, ll. 25–32.
Regarding claim 15, Cummings teaches that the “VRU” is a “scrubber” at least because the gas separation unit 60 of the “VRU” mixes gas with methanol, with the mixture then being cooled to a relatively low temperature to condense liquid from the mixture to thereby separate liquid from the gas. See Cummings Fig. 3, col. 8, ll. 35–54.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Cummings, US 4,124,496 in view of Rajewski, US 5,980,737 and in further view of Schubert et al., US 5,302,294.
Regarding claims 9 and 10, Cummings as modified teaches the limitations of claim 1, as explained above.
Cummings as modified differs from claim 9 because it is silent as to the medium pressure separator 46 (the “stabilizer tower”) being operable to produce a “stabilizer water output.” Cummings as modified also differs from claim 10 because it is silent as to the low pressure separator 50 (the “heater treater”) being operable to produce a “heater treater water output.”
But Cummings teaches that the incoming well stream fluid 100 comprises water, which is separated in the high pressure three phase separator 42, with the water exiting through line 152. See Cummings Fig. 3, col. 6, ll. 33–52. The three phase separator 42 is upstream the medium and low pressure separators 46, 50. Id. Also, the medium and low pressure separators 46, 50 are illustrated as two-phase separators that separate fluid into a gas phase (exiting at lines 136 and 154) and a liquid phase (exiting at lines 120 and 128).
With this in mind, Schubert teaches a separation system for fluid produced form an oil well comprising a first three phase separator (similar to the three phase separator 42 of Cummings) with additional three-phase separators placed in series with the first gravity separator. See Schubert col. 1, ll. 14–30. The three phase separators are able to separate a fluid into oil, water and gas phases, with the water being withdrawn via a pipe as a “water leg.” Id. A person of ordinary skill in the art would have understood that the additional three phase separators are beneficial for removing water that was not separated in the first three phase separator.
It would have been obvious for the medium and low pressure separators 46, 50 of Cummings to be three phase separators, with a water leg for discharging water, to remove residual water that was not removed in the three-phase separator 42.
With this modification, the water leg of the medium pressure separator 42 reads on the “stabilizer water output” (claim 9) and the water leg of the low pressure separator 50 reads on the “heater treater water output” (claim 10).
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.
U.S. Application No. 18/851,950
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/515,950 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ’950 application teaches all of the limitations of instant claim 1. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/515,950 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of the ’950 application teaches all of the limitations of instant claim 2. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/515,950 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of the ’950 application teaches all of the limitations of instant claim 3. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/515,950 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of the ’950 application teaches all of the limitations of instant claim 3. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 18/515,950 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of the ’950 application teaches all of the limitations of instant claim 10. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18/515,950 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of the ’950 application teaches all of the limitations of instant claim 11. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/515,950 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of the ’950 application teaches all of the limitations of instant claim 12. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 13 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18/515,950 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of the ’950 application teaches all of the limitations of instant claim 13. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
U.S. Patent No. 11,725,152 B2
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,725,152 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of claim 1 of the ’152 patent teaches all of the structural limitations of the system of instant claim 1.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,725,152 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of claim 2 of the ’152 patent teaches all of the structural limitations of the system of instant claim 2.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,725,152 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of claim 4 of the ’152 patent teaches all of the structural limitations of the system of instant claim 3.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,725,152 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of claim 5 of the ’152 patent teaches all of the structural limitations of the system of instant claim 4.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 11,725,152 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of claim 10 of the ’152 patent teaches all of the structural limitations of the system of instant claim 9.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,725,152 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of claim 9 of the ’152 patent teaches all of the structural limitations of the system of instant claim 11.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,725,152 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of claim 8 of the ’152 patent teaches all of the structural limitations of the system of instant claim 12.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,725,152 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of claim 6 of the ’152 patent teaches all of the structural limitations of the system of instant claim 13.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,725,152 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of claim 7 of the ’152 patent teaches all of the structural limitations of the system of instant claim 14.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Van Asperen et al., US 2019/0217222 A1; Krehbiel et al., US 2008/0190291 A1; Guerra et al., US 2006/0070735 A1; Webb, US 5,195,587; Heath, US 4,617,030; Talley, US 3,590,919.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to T. BENNETT MCKENZIE whose telephone number is (571)270-5327. The examiner can normally be reached Mon-Thurs 7:30AM-6:00PM.
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, Jennifer Dieterle can be reached at 571-270-7872. 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.
T. BENNETT MCKENZIE
Primary Examiner
Art Unit 1776
/T. BENNETT MCKENZIE/Primary Examiner, Art Unit 1776