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 Objections
Claims 5 and 15 are objected to because of the following informalities: the recited “comprising a reversing agent is chosen from…” should be --comprising a reversing agent chosen from…--. Appropriate correction is required.
Specification
The disclosure is objected to under 37 CFR 1.71, as being so incomprehensible as to preclude a reasonable search of the prior art by the examiner. For example, the following items are not understood:
The specification recites “40% to 80% by weight of particles … of at least one synthetic water-soluble polymer P, and 0.5% to 5.0% by weight of at least one emulsifying agent, the percentages being expressed by weight relative to the weight of the lipophilic apolar solvent” in step a) [P4L1-4, spec.]. This can be interpreted as every 40-80 g of the polymer P and every 0.5-5.0 g of the emulsifying agent per 100 g of the solvent, which will lead to a content of 28.5-43.2 wt% of the polymer P and 0.36-2.7 wt% of the emulsifying agent in the oily suspension. Thus, after combining this oily suspension with a brine, the content of the polymer P has to be lower than 28.5-43.2 wt% because the polymer P is diluted by the brine. However, the specification recites “a multiphase suspension MSa containing 10% to 65% by weight of synthetic water-soluble polymer P, the percentages being expressed by weight relative to the weight of the multiphase suspension MSa” [P4L8-10, spec.] in step c) after combining the oily suspension with a brine, which is not consistent with the limitation in step a) because the content of polymer P cannot reach 65 wt% as explained above.
It is not clear whether the content 40% to 80% of polymer P is actually based on the oily suspension (which makes sense) or based on the solvent (which does not make sense as explained above) in step a), or the limitation of 10% to 65% by weight of synthetic water-soluble polymer P by weight relative to the weight of the multiphase suspension MSa” in step c) is wrong.
Similar issue exists in step b) “a brine B is prepared by adding to water 30% to 60% by weight of at least one calcium halide and 0.05% to 1.50% by weight of at least one rheology modifier, the percentages being expressed by weight relative to the weight of the water” [P4L5-7, spec.]. Instead of relative to the weight of the water, it may actually be relative to the weight of the brine B; or the limitation of “the percentages being expressed by weight relative to the weight of the multiphase suspension MSa” is wrong.
The specification recites an “inverting agent”. The specification does not define the term of “inverting agent”. The specification recites “the inverting agent (ethoxylated alcohol (8 ethoxylations)) [P9L31-32, spec.]. Thus, ethoxylated alcohol can be considered as an example of inverting agent. The specification recites “the reversing agent” which lacks antecedent basis (unless “the reversing agent” is identical to the “inverting agent” recited before [P4L12, spec.]) and include ethoxylated alcohols [P8L11-14, spec.]. The specification does not define the term of “reversing agent”. It is not clear if the term “inverting agent” and the term “reversing agent” are identical.
Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art.
Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).
A shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter.
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.
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 1-20 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.
Claim 1 recites “40% to 80% by weight of particles … of at least one synthetic water-soluble polymer P, and 0.5% to 5.0% by weight of at least one emulsifying agent, the percentages being expressed by weight relative to the weight of the lipophilic apolar solvent” in step a). This can be interpreted as every 40-80 g of the polymer P and every 0.5-5.0 g of the emulsifying agent per 100 g of the solvent, which will lead to a content of 28.5-43.2 wt% of the polymer P and 0.36-2.7 wt% of the emulsifying agent in the oily suspension. Thus, after combining this oily suspension with a brine, the content of the polymer P has to be lower than 28.5-43.2 wt% because the polymer P is diluted by the brine. However, claim 1 recites “a multiphase suspension MSa containing 10% to 65% by weight of synthetic water-soluble polymer P, the percentages being expressed by weight relative to the weight of the multiphase suspension MSa” in step c) after combining the oily suspension with a brine, which is not consistent with the limitation in step a) because the content of polymer P cannot reach 65 wt% as explained above.
It is not clear whether the content 40% to 80% of polymer P is actually based on the oily suspension (which makes sense) or based on the solvent (which does not make sense as explained above) in step a), or the limitation of 10% to 65% by weight of synthetic water-soluble polymer P by weight relative to the weight of the multiphase suspension MSa” in step c) is wrong.
Similar issue exists in step b) “a brine B is prepared by adding to water 30% to 60% by weight of at least one calcium halide and 0.05% to 1.50% by weight of at least one rheology modifier, the percentages being expressed by weight relative to the weight of the water”. Instead of relative to the weight of the water, it may actually be relative to the weight of the brine B; or the limitation of “the percentages being expressed by weight relative to the weight of the multiphase suspension MSa” is wrong.
Claim 1 recites an “inverting agent”. The specification does not define the term of “inverting agent”. The specification recites “the inverting agent (ethoxylated alcohol (8 ethoxylations)) [P9L31-32, spec.]. Thus, ethoxylated alcohol can be considered as an example of inverting agent. Claims 5 and 15 recites a “reversing agent” which include ethoxylated alcohols. The specification does not define the term of “reversing agent”. It is not clear if the term “inverting agent” and the term “reversing agent” are identical.
Claims 2-20 are rejected likewise as depending on claim 1.
As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06(II). Since the meanings and scopes of claim 1 are not clear, it is not proper to reject claims 1-20 on the basis of prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762