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 .
Drawings
The drawings were received on 09/16/25. These drawings are not accepted.
The Examiner notes, the drawings filed on 09/16/25 appear more unclear than those that were originally filed and text presented thereon can still not be read; in some instances, the text is completely illegible. As such, the drawing objections are maintained herein.
Fig. 1A-1D are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Even though Applicant has identified Fig. 1A-1D in the brief description of the drawing, the specification merely describes such figures within the detailed description by reference for “FIG. 1” a single time on page 9 at line 32. Applicant is requested to refer to Fig. 1A-1D throughout the specification to avoid any confusion. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Fig. 2A-2C are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Even though Applicant has identified Fig. 2A-2C in the brief description of the drawing, the specification merely describes such figures within the detailed description by reference for “FIG. 2” on page 11, line 19, page 12, line 24 and page 25, line 14. Applicant is requested to refer to Fig. 2A-2C throughout the specification to avoid any confusion. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Fig. 3 is objected to because it is difficult to read all numbers and words provided thereon; for example, the text on the vertical right axis of each graph is completely illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Fig. 4 and Fig. 5 are objected to because it is difficult to read any of the numbers/text presented thereon. Furthermore, the plots each use a dot to identify each plot, and since the shape is the same and colors thereof particularly similar, it is difficult to distinguish each from the other. Use of different shapes for each plot is advised. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Fig. 6 is objected to because it is difficult to distinguish between each of the blank, 2ppm, 10 ppm and 50 ppm plots as each use a dot for identification; although the blank appears to be the darkest, since the shape is the same and colors thereof particularly similar for 2ppm, 10 ppm and 50 ppm, it is difficult to distinguish each from the other. Use of different shapes for each plot is advised. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Fig. 9 is objected to because it is difficult to read any of the numbers/text presented thereon. Furthermore, the plots each use a dot to identify each plot, and since the shape is the same and colors thereof particularly similar, it is difficult to distinguish each from the other. Use of different shapes for each plot is advised. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Fig. 11- Fig. 15 are each objected to because it is difficult to read any of the numbers/text presented therein. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Fig. 16 is objected to because the structures presented therein are very light in color and not all lines connecting components are clear. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 1, along with claims 7-9, dependent therefrom, is 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 has been amended to recite “A method for enhancing oil recovery from an oil production environment having zinc sulfide or iron sulfide scale deposits and/or scale ions therein…contacts the scale deposits and/or scale ions…inhibits the formation of scale deposition on surfaces..and/or removes scale deposits.” It is unclear if Applicant intends each of the instances of scale deposits/scale deposition to indeed be that of zinc sulfide or iron sulfide, or, if rather, any scale deposits and/or scale deposition, i.e., not specifically zinc sulfide or iron sulfide. Furthermore, it is noted, the use of “and/or” prior to scale ions appears to suggest such scale is any scale and not necessarily limited to that of zinc sulfide or iron sulfide. Clarification is required.
Claim 1 has been amended to incorporate the structures of the glycolipid biosurfactant. The structures, however, are rather faint and in some instances difficult to read and unclear. For example, the structure at the top left, it appears includes groups of OH, but in some instances, the “H” looks like an “N.” Clarification is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Farmer et al. (WO 2020/264071 A1 – cited and provided previously) in view of Jiang et al. (WO 2023/084214- cited and provided previously) as evidenced by JBR 320.
With respect to independent claim 1, Farmer et al. discloses a method for enhancing oil recovery from an oil production environment (p. 26, l. 24-27) having zinc sulfide or iron sulfide scale deposits (p. 1, l. 14-19; p. 8, l. 9-19) and/or scale ions therein (p. 28, l. 32-p. 29, l. 7), the method comprising applying (p. 26, l. 31-32) a composition comprising one or more microbial biosurfactants (p. 4, l. 1-20) to the oil production environment such that the composition contacts the scale deposits and/or scale ions, wherein the composition inhibits the formation of scale deposition on surfaces in the oil production environment and/or wherein the composition removes scale deposits that are present on the surfaces (p. 3, l. 19-27; p. 27, l. 32-p. 29, l. 32), wherein the composition comprises one or more glycolipid biosurfactants (p. 4, l. 1-15; p. 12, l. 27-p. 13, l. 10).
Farmer et al. discloses wherein the biosurfactants include glycolipids and are capable of reducing the surface and interfacial tension between the molecules of liquids, solids, and gases (p. 12, l. 9-18); examples thereof include sophorolipids having a general formula (p. 12, l. 32- p. 13, l. 10) as well as rhamnolipids (p. 4, l. 7-15; p. 12, l. 23-25). The reference, however, fails to disclose a formula thereof as one as instantly claimed.
Jiang et al. teaches glycolipid biosurfactants including sophorolipids and rhamnolipids used for the purpose of enhancing and accelerating the rate of dissolution of inorganic scale within the bore (p. 3, l. 22-25), defined as the bore itself, as well as any equipment that may be present within the well including pipes, tubulars, casings, pumps, valves and the like (p. 7, l. 16-24), by removing hydrocarbons that would otherwise prevent or hinder a reaction with inorganic scale removal agents, wherein such biosurfactants are capable of penetrating deeper into a rock formation than conventional surfactants and thus are able to more effectively clean undesirable hydrocarbon deposits; examples thereof include JBR320 from JENEIL Biotech (p. 4, l. 21-35; p. 23, l. 1-13). The Examiner notes, JBR 320 has a structure corresponding to the bottom right structure instantly claimed in claim 1 (see evidence of such in attached JBR 320 product information from JENEIL Biotechnology).
It would have been obvious to one having ordinary skill in the art to try a glycolipid such as JBR 320 as taught by Jiang et al. as the biosurfactant in the method of Farmer et al. in order to yield the predictable result of enhancing the rate of dissolution of the inorganic scale therewith by removing any hydrocarbons that would prevent or hinder the reaction with the inorganic scale as well allowing deeper penetration into the rock formation than can be achieved with conventional surfactants. Jiang et al. suggests JBR 320 as part of a finite number of identified, predictable solutions used for such a purpose and it has been held “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
With respect to dependent claim 7, Farmer et al. discloses wherein the composition is applied to a fluid comprising scale ions, said fluid selected from the group as claimed, wherein the application of the composition disperses scale ions, reduces agglomeration of scale ions and/or reduces precipitation of scale crystals from the fluids (p. 27, l. 20-26; p. 27, l. 32-35; p. 28, l. 8-18; p. 28, l. 32-p. 29, l. 32).
With respect to dependent claim 8, Farmer et al. discloses wherein the composition is applied directly to a surface of equipment associated with oil production, processing, transportation, storage and/or refining selected from the group as claimed, and wherein the application of the composition reduces the deposition of scale crystals thereon and/or removes scale deposits from the surface (p. 28, l. 19-p. 29, l. 22).
With respect to dependent claim 9, Farmer et al. discloses wherein the composition is injected into a subterranean formation as claimed (p. 29, l. 8-17).
Response to Arguments
Applicant’s arguments and amendments made with respect to the objections to the abstract have been fully considered and are persuasive. The abstract objections have been withdrawn.
Applicant's arguments with respect to the remaining specification objections, as well as those made thereto in regard to the drawings, have been fully considered but they are not persuasive. Applicant notes the changes have been made and can be seen in a substitute specification with clean and marked up copies. However, there are currently no copies present of either a substitute specification and/or a clean or marked up copy thereof. As such, the objections are maintained.
Applicant’s cancelation of claims 10 and 11 renders the 35 USC 112 and 101 rejections thereof moot.
Applicant’s arguments with respect to the rejections of claims as anticipated by Farmer et al. have been fully considered; although the anticipation rejection has been withdrawn, in view of Applicant’s amendments to claim 1 requiring the biosurfactant to have one of the four structures claimed, a new grounds of rejection has been presented above.
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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
09/29/25