DETAILED ACTION
Claims 1, 6 and 15 are pending as amended on 4 September 2026, claims 8, 9, 16, 17 and 19-23 are withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s amendments to the claims and the remarks/arguments have been entered and fully considered.
Response to Amendment and Arguments
Applicant’s amendment overcomes the rejections of claim 1 under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Gamsey, and of claim 15 under 35 U.S.C. 103 over AIJabri in view of Rembaum. The rejections have been withdrawn. However, the rejections under 35 U.S.C. 103 of claim 1 over AIJabri and of claim 6 over AIJabri in view of Rembaum stand.
Applicant’s arguments in light of the amendment have been fully considered.
With respect to AlJabri, Applicant argues that AIJabri fails to teach a polymer comprising multiple functional units as amended. The examiner disagrees. AIJabri teaches the polymer comprises monomers such as 3-sulfopropyl methacrylate potassium salt ([0077]), which meets the claimed first unit, and propyl methacrylate ([0077]), which is a structural homolog of the claimed butylmethacrylate and renders the claimed third unit obvious; and fluorescein isothiocyanate covalently attached to an amine modified acrylate to the polymer ([0075]), which meets the claimed second unit.
In response to applicant's argument that AlJabri does not disclose design of monomer composition for transport in porous media, simultaneous optimization of adsorption and oil partitioning behavior, or a tracer capable of providing multiple types of information in an oilfield,
it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further,
AlJabri expressly discloses that the taggant is for wellbore surface logging (abstract), thus transports in porous media and provides information of the wellbore.
With respect to the rejection of claim 6 over AIJabri in view of Rembaum, in response to applicant's argument that Rembaum is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Rembaum is pertinent in teaching an amine modified acrylate for covalently attaching fluorescein isothiocyanate to provide a highly fluorescent and a stable fluorescent tracer (abstract).
The species of formula (I) of claim 15 is allowable. The search has been extended to formula (II) of claim 15.
Claim Rejections - 35 USC § 103
Claim 1 stands rejected under 35 U.S.C. 103 as being unpatentable over AIJabri.
AIJabri teaches a polymeric taggant for well drilling comprises a polymer nanoparticles with a fluorescent dye attached to the polymer([0002] and [0016]), wherein the polymer comprises acrylic monomers such as 3-sulfopropyl methacrylate potassium salt ([0077]), which meets the claimed first unit, and the fluorescent dye such as fluorescein isothiocyanate can be covalently attached to the nanoparticles by reaction between isothiocyanate and amine group of amine modified acrylate ([0075]), which renders a fluorescence detectable second unit containing fluorescein isothiocyanate obvious.
AIJabri teaches the acrylic monomers further include propyl methacrylate ([0077]), which is structural homolog to the claimed methyl methacrylate or butylmethacrylate thus exhibiting similar lipophilicity that one of ordinary skill in the art would have been motivated to utilize methyl methacrylate or butylmethacrylate in the polymer nanoparticles of AIJbri. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). See MPEP2144.09 I and II.
Claim 6 stands rejected under 35 U.S.C. 103 as being unpatentable over AIJabri in view of Rembaum.
The teachings of AIJabri are set forth above.
While teaching covalently attaching fluorescein isothiocyanate to amine modified acrylate by reaction between isothiocyanate and amine modified acrylate ([0075]), AI Jabri does not expressly disclose the amine modified acrylate is 2-aminoethyl methacrylate.
Rembaum teaches 2-aminoethyl methacrylate are readily available commercially and can react with fluorescein isothiocyanate to form a thiourea residue and a polymerizable fluorescent monomer (col2,line 30-33, col.4, line 10-15 and col.5, line 5-20).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to employ the commercially readily available 2-aminoethyl methacrylate of Rembaum to covalently attach the fluorescein isothiocyanate to the polymer of AI Jabri. The rationale to do so would have been the motivation provided by the teachings of Rembaum that to do so would predictably attach fluorescein isothiocyanate to the acrylate polymer of AIJabri, 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. 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), in the instant case, an amine modified acrylate for covalently attaching fluorescein isothiocyanate.
Allowable Subject Matter
Claim 15 is 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.
Conclusion
THIS ACTION IS MADE FINAL. 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-2721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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