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 Rejections - 35 USC § 103
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.
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.
Claims 1, 3-6, 8-10, 13, 15-18 and 20-23 are finally rejected under 35 U.S.C. 103 as being unpatentable over An et al. (WO 2021/030505) in view of de Rijk (US 2008/0035580).
Per claim 1, An et al. disclose method of treating process water ([0015] Disclosed herein are compositions for use in facilitating resource recovery during wellbore servicing operations. In one or more aspects, the compositions disclosed herein may be employed in any aspect of wellbore servicing compatible with a user and/or process goal.; [0037] In an aspect, the MWSA functions to inhibit chlorine dioxide induced corrosion. In such aspects, the MWSA may comprise a biochelant of the type disclosed herein. For example, Figure 2 depicts a process flow diagram for the treatment of process water, 100.), the method comprising:
introducing to a system comprising process water a composition comprising (i)
one or more biocides (Abstract, A multifunctional wellbore servicing additive composition includes a biochelant and at least one compound selected from the group consisting of acid, oxidizer, protectant, and surfactant.; [0039] In an aspect, the MWSA functions as an oxidizer, a metal chelator (e.g., Fe.sup.3+) and a biocide. Herein a biocide refers to a chemical intended to destroy, deter, render harmless, or exert a controlling effect on any harmful organism. In such aspects, the MWSA comprises a biochelant, a peroxide and a solvent, each of the type disclosed previously herein. For example, the MWSA may comprise the biochelant, hydrogen peroxide and water.) and (ii) one or more biochelants (Abstract, A multifunctional wellbore servicing additive composition includes a biochelant…), wherein a ratio of the one or more biocides to the one or more biochelants overlaps a range of 10:90 to about 90:10 ([0023] In an aspect, the MWSA is prepared as a concentrate having the biochelant present in an amount of from about 1 wt.% to about 70 wt.%, alternatively from about 20 wt.% to about 70 wt.%, alternatively from about 1 wt.% to about 10 wt.% or alternatively about 10 wt.% to about 50 wt.% based on the total weight of the MWSA.; [0027] The oxidizing agent may be present in the MWSA concentrate in an amount of from about 3 wt.% to about 50 wt.%, alternatively, from about 20 wt.% to about 34 wt.%, alternatively from about 34 wt.% to about 50 wt.% or alternatively from about 3 wt.% to about 8 wt.% based on the total weight of the MWSA.). Thus, when the biocide is, for example, 3% and the biochelant is, for example, 27%, the biocide to biochelant ratio is about 10:90 and when the biocide is, for example, 27% and the biochelant is, for example, 3%, the biocide to biochelant ratio is about 90:10. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, the range of about 10:90 to about 90:10, which lies within the range disclosed by An et al., is obvious in view of the disclosure of An et al.
Alternatively, it is submitted that it would have been a routine matter of optimization of a process effective variable to provide the biocide to biochelant ratio at about 10:90 to about 90:10 through routine experimentation, depending on anticipated contaminant loading, water quality and the results derived. Further, the examiner notes that applicant has not provided for the record a proper showing (e.g., comparative test data or an affidavit prior to closing of prosecution) of any new and unexpected result obtained by using the ratio range of about 10:90 to about 90:10.
An et al. do not disclose the one or more biochelants comprising gluconic acid or salts thereof and glucaric acid or salts thereof with minor component species of n-keto-acids, C₂ to C6 diacids or a combination thereof.
At any rate, de Rijk, also directed to treating water (Abstract, The present invention relates to compositions and their use for the treatment of water.), discloses introducing to a system comprising water a composition (Abstract, The present invention relates to compositions and their use for the treatment of water.; [0025] Another embodiment of the invention is a method for removing biofilm from, and/or for preventing biofilm from forming on, a surface, comprising adding an effective amount of a composition of the present invention to a water system.) comprising (i) one or more biocides (claim 9, The composition as defined in claim 1, further comprising an effective amount of a bactericide.; [0173] Other agents include antimicrobials e.g., chlorhexidine, amine fluoride compounds, fluoride ions, hypochlorite, quaterinary ammonium compounds e.g. cetylpyridinium chloride, hydrogen peroxide, monochloramine, providone iodine, any recognized sanitizing agent or oxidative agent and biocides.) and (ii) one or more biochelants comprising gluconic acid or salts thereof and glucaric acid or salts thereof ([0154] As mentioned above, the salt carrier may contain other carrier materials, preferably in amounts from 0 to about 10 percent by weight of the tablet. These materials are preferably solid and include other carrier materials known in the art. These materials may be solid organic acids such as benzoic, gluconic, or sorbic acid. Use of such materials may allow the salt carrier to have beneficial activity, including biological activity, in the aqueous system. For example, gluconic acid, or its salts, may be used in a carrier matrix. But when the tablet is added to an aqueous system, the gluconic acid may additionally function as a metal chelant to sequester iron and prevent iron oxide staining.) with minor component species of n-keto-acids, C₂ to C6 diacids or a combination thereof ([0159] Corrosion inhibitors may optionally be added to the composition. Corrosion inhibitors, also known as anti-corrosive or anti-rust agents, reduce the degradation of the metallic parts contacted by the detergent and are incorporated at a level of about 0.1% to about 15%, and preferably about 0.5% to about 5% by weight of the total composition.; [0161] Other useful corrosion inhibitors include organic zinc complexes such as a zinc citrate, zinc hydroxy oxime complexes, and zinc copolymer complexes of acrylic acid ethacrylate; nitrogen and sulfur-containing aryl heterocycles; alkanolamines such as triethanolamine; amine-neutralized alkyl acid phosphates; dibasic acids-neutralized with amines, where the dibasic acids include, but are not limited to, adipic acid, succinic acid, sebacic acid, glutaric acid, malonic acid, suberic acid and examples of amines include, but are not limited to, methylamine, ethylamine, ethanolamine, diethanolamine, triethanolamine and N,N-dimethylcyclohexylamine, and mixtures thereof.) in order to, for example, facilitate biological activity in the water system and provide corrosion-inhibition in an environmentally-friendly manner (Abstract, This invention also provides compositions and their use to provide clean water in an environmentally-friendly manner.).
Accordingly, it would have been readily obvious for the skilled artisan to modify the method of An et al. such that it comprises gluconic acid or salts thereof and glucaric acid or salts thereof with minor component species of n-keto-acids, C₂ to C6 diacids or a combination thereof in order to, for example, facilitate biological activity in the water system and provide corrosion-inhibition in an environmentally-friendly manner.
Per claim 3, An et al. disclose wherein the one or more biochelants further comprise a counter-cation ([0020] In an aspect, the biochelant comprises an aldonic acid, uronic acid, aldaric acid or combination thereof and a counter cation.).
Per claim 4, An et al. disclose wherein the counter-cation comprises silicates, borates, aluminum, calcium, magnesium, zinc, copper, ferric iron, ferrous iron, ammonium, sodium, potassium, cesium, strontium or a combination thereof ([0020] The counter cation may comprise an alkali metal (Group I), an alkali earth metal (Group II) or combinations thereof. In certain aspects, the counter cation is sodium, potassium, magnesium, calcium, strontium, as well as cesium.).
Per claim 5, An et al. disclose wherein the biocide comprises aldehydes, quaternary ammonium cations, brominated organic compounds, phosphonium salts, hydrogen peroxide, peracetic acid, bleach, chlorides, citric acid, derivatives thereof, or a combination thereof ([0039] In such aspects, the MWSA comprises a biochelant, a peroxide and a solvent, each of the type disclosed previously herein. For example, the MWSA may comprise the biochelant, hydrogen peroxide and water.).
Per claim 6, An et al. disclose wherein the biocide comprises 2,2-dibromo-3-nitrilopropionamide (DBNPA), tetrakis hydroxymethyl-phosphonium sulfates,
bronopol, (+)-tartaric acid, (1,3,4,5,6,7-hexahydro-1,3-dioxo-2H-isoindol-2-yl)methy
(d-Tetramethrin), (13Z)-Hexadec-13-en-11-yn-1-yl acetate, (9Z,12E)-tetradeca-9,12-
dien-1-yl acetate, (benzothiazol-2-ylthio)methyl thiocyanate (TCMTB),
(E)-1-(2-Chloro-1,3-thiazol-5-ylmethyl)-3-benzyloxy)methanol, methyl-2-nitroguanidine (Clothianidin), (ethylenedioxy)dimethanol (Reaction products of ethylene glycol with paraformaldehyde (EGForm)), (RS)-3-Allyl-2-methyl-4-(1R,3R)-2,2-dimethyl-3-(2-methyl
prop-1-enyl)-oxocyclopent-2-enyl cyclopropanecarboxylate (mixture of 2 isomers 1R trans: 1R/S only 1:3) (Esbiothrin), (1R,3S)-2,2-dimethyl-3-(2- methylprop-1-enyl)-cyclopropanecarboxy late (mixture of 4 isomers 1R trans, 1R:1R trans, 1S: 1R cis, 1R: 1R cis, 1S 4:4:1:1) (d-Allethrin), trans-3-(2,2-dichlorovinyl)-2,2-(RS)-q-cyano-3phenoxybenzyl-(1RS)-cis, dimethylcyclopropanecarboxylate (Cypermethrin), 1,2-benzisothiazol-3(2H)-one (BIT), 1,3-bis(hydroxymethyl)-5,5-dimethylinidazolidine-2,4-dione (DMDMH), 1-[2-(allyloxy)-2-(2,4-dichlorophenyl)ethyl]-1H-imidazole (Imazalil), 2,2-dibromo-2-cyanoacetamide (DBNPA), 2,2',2"-(hexahydro-1,3,5-triazine-1,3,5- triyl)triethanol (HHT), 4,4-dimethyloxazolidine, 4,5-Dichloro-2-octylisothiazol-3(2H)-one (4,5-Dichloro-2-octyl-2H-isothiazol-3-one (DCOIT)), 4-bromo-2-(4-chlorophenyl)-1-
ethoxy methyl-5-trifluoromethylpyrrole-3-carbonitrile (Chlorfenapyr), 4-bromo-2-(4-
methyl-5-trifluoromethylpyrrole-3-carbonitrile chlorophenyl)-1-ethoxy (Chlorfenapyr),
5-chloro-2-(4-chlorphenoxy)phenol (DCPP), 6-(phthalimido)peroxyhexanoic acid (PAP), 7a-ethyldihydro-1H,3H,5H-oxazolo[3,4-c]oxazole (EDHO), tetrakis(hydroxymethyl)phosphonium sulfate (THPS), and
tetrakis(hydroxymethyl)phosphonium chloride (THPC) or a combination thereof (Table 8; [0057] [0057] A comparison of the iron chelating ability was made and is detailed in Table 8. In Table 8 THPS refers to tetrakis(hydroxymethyl)phosphonium sulfate while EDTA refers to ethylenediaminetetraacetic acid.).
Per claim 8, An et al. disclose wherein the composition further comprises a solvent ([0034] In an aspect, the MWSA optionally comprises a solvent. In some aspects the solvent comprises C.sub.2 to C.sub.2o ethers, C.sub.2 to C.sub.20 carbonates, C.sub.2 to C.sub.20 esters, C.sub.2 to C.sub.20 ketones, C.sub.2 to C.sub.20 aldehydes, C.sub.2 to C.sub.20 alcohols or combinations thereof. Alternatively, the solvent comprises a C.sub.2 to C.sub.2o alcohol.).
Per claim 9, An et al. disclose wherein the solvent comprises an alcohol ([0034] In an aspect, the MWSA optionally comprises a solvent. In some aspects the solvent comprises C.sub.2 to C.sub.2o ethers, C.sub.2 to C.sub.20 carbonates, C.sub.2 to C.sub.20 esters, C.sub.2 to C.sub.20 ketones, C.sub.2 to C.sub.20 aldehydes, C.sub.2 to C.sub.20 alcohols or combinations thereof. Alternatively, the solvent comprises a C.sub.2 to C.sub.2o alcohol.).
Per claim 10, An et al. disclose wherein the solvent comprises an aqueous fluid ([0034] Alternatively, the solvent comprises water.; [0076] An eighteenth aspect which is the composition of the seventeenth aspect wherein the solvent comprises methanol, ethanol, propanol, butanol, pentanol, isopropanol, ethylene glycol, propylene glycol or a combination thereof.; [0077] A nineteenth aspect which is the composition of any of the seventeenth through eighteenth aspects wherein the solvent comprises water.).
Per claim 13, An et al. disclose a composition ([0015] Disclosed herein are compositions for use in facilitating resource recovery during wellbore servicing operations. In one or more aspects, the compositions disclosed herein may be employed in any aspect of wellbore servicing compatible with a user and/or process goal.;), comprising:
(i) one or more biocides (Abstract, A multifunctional wellbore servicing additive composition includes a biochelant and at least one compound selected from the group consisting of acid, oxidizer, protectant, and surfactant.; [0039] In an aspect, the MWSA functions as an oxidizer, a metal chelator (e.g., Fe.sup.3+) and a biocide. Herein a biocide refers to a chemical intended to destroy, deter, render harmless, or exert a controlling effect on any harmful organism. In such aspects, the MWSA comprises a biochelant, a peroxide and a solvent, each of the type disclosed previously herein. For example, the MWSA may comprise the biochelant, hydrogen peroxide and water.); and
(ii) one or more biochelants (Abstract, A multifunctional wellbore servicing additive composition includes a biochelant…), wherein a ratio of the one or more biocides to the one or more biochelants overlaps a range of 10:90 to about 90:10 ([0023] In an aspect, the MWSA is prepared as a concentrate having the biochelant present in an amount of from about 1 wt.% to about 70 wt.%, alternatively from about 20 wt.% to about 70 wt.%, alternatively from about 1 wt.% to about 10 wt.% or alternatively about 10 wt.% to about 50 wt.% based on the total weight of the MWSA.; [0027] The oxidizing agent may be present in the MWSA concentrate in an amount of from about 3 wt.% to about 50 wt.%, alternatively, from about 20 wt.% to about 34 wt.%, alternatively from about 34 wt.% to about 50 wt.% or alternatively from about 3 wt.% to about 8 wt.% based on the total weight of the MWSA.). Thus, when the biocide is, for example, 3% and the biochelant is, for example, 27%, the biocide to biochelant ratio is about 10:90 and when the biocide is, for example, 27% and the biochelant is, for example, 3%, the biocide to biochelant ratio is about 90:10. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, the range of about 10:90 to about 90:10, which lies within the range disclosed by An et al., is obvious in view of the disclosure of An et al.
Alternatively, it is submitted that it would have been a routine matter of optimization of a process effective variable to provide the biocide to biochelant ratio at about 10:90 to about 90:10 through routine experimentation, depending on anticipated contaminant loading, water quality and the results derived. Further, the examiner notes that applicant has not provided for the record a proper showing (e.g., comparative test data or an affidavit prior to closing of prosecution) of any new and unexpected result obtained by using the ratio range of about 10:90 to about 90:10.
An et al. do not disclose the one or more biochelants comprising gluconic acid or salts thereof and glucaric acid or salts thereof with minor component species of n-keto-acids, C₂ to C6 diacids or a combination thereof.
At any rate, de Rijk, also directed to a composition (Abstract, The present invention relates to compositions and their use for the treatment of water.), discloses (i) one or more biocides (claim 9, The composition as defined in claim 1, further comprising an effective amount of a bactericide.; [0173] Other agents include antimicrobials e.g., chlorhexidine, amine fluoride compounds, fluoride ions, hypochlorite, quaterinary ammonium compounds e.g. cetylpyridinium chloride, hydrogen peroxide, monochloramine, providone iodine, any recognized sanitizing agent or oxidative agent and biocides.) and (ii) one or more biochelants comprising gluconic acid or salts thereof and glucaric acid or salts thereof ([0154] As mentioned above, the salt carrier may contain other carrier materials, preferably in amounts from 0 to about 10 percent by weight of the tablet. These materials are preferably solid and include other carrier materials known in the art. These materials may be solid organic acids such as benzoic, gluconic, or sorbic acid. Use of such materials may allow the salt carrier to have beneficial activity, including biological activity, in the aqueous system. For example, gluconic acid, or its salts, may be used in a carrier matrix. But when the tablet is added to an aqueous system, the gluconic acid may additionally function as a metal chelant to sequester iron and prevent iron oxide staining.) with minor component species of n-keto-acids, C₂ to C6 diacids or a combination thereof ([0159] Corrosion inhibitors may optionally be added to the composition. Corrosion inhibitors, also known as anti-corrosive or anti-rust agents, reduce the degradation of the metallic parts contacted by the detergent and are incorporated at a level of about 0.1% to about 15%, and preferably about 0.5% to about 5% by weight of the total composition.; [0161] Other useful corrosion inhibitors include organic zinc complexes such as a zinc citrate, zinc hydroxy oxime complexes, and zinc copolymer complexes of acrylic acid ethacrylate; nitrogen and sulfur-containing aryl heterocycles; alkanolamines such as triethanolamine; amine-neutralized alkyl acid phosphates; dibasic acids-neutralized with amines, where the dibasic acids include, but are not limited to, adipic acid, succinic acid, sebacic acid, glutaric acid, malonic acid, suberic acid and examples of amines include, but are not limited to, methylamine, ethylamine, ethanolamine, diethanolamine, triethanolamine and N,N-dimethylcyclohexylamine, and mixtures thereof.) in order to, for example, facilitate biological activity in the water system and provide corrosion-inhibition in an environmentally-friendly manner (Abstract, This invention also provides compositions and their use to provide clean water in an environmentally-friendly manner.).
Accordingly, it would have been readily obvious for the skilled artisan to modify the composition of An et al. such that it comprises gluconic acid or salts thereof and glucaric acid or salts thereof with minor component species of n-keto-acids, C₂ to C6 diacids or a combination thereof in order to, for example, facilitate biological activity in the water system and provide corrosion-inhibition in an environmentally-friendly manner. Per claim 15, An et al. disclose wherein the one or more biochelants further comprise a counteraction ([0020] In an aspect, the biochelant comprises an aldonic acid, uronic acid, aldaric acid or combination thereof and a counter cation.).
Per claim 16, An et al. disclose wherein the counter-cation comprises silicates, borates, aluminum, calcium, magnesium, zinc, copper, ferric iron, ferrous iron, ammonium, sodium, potassium, cesium, strontium or a combination thereof ([0020] The counter cation may comprise an alkali metal (Group I), an alkali earth metal (Group II) or combinations thereof. In certain aspects, the counter cation is sodium, potassium, magnesium, calcium, strontium, as well as cesium.).
Per claim 17, An et al. disclose wherein the one or more biocides comprise
aldehydes, quaternary ammonium cations, brominated organic compounds,
phosphonium salts, hydrogen peroxide, peracetic acid, bleach, chlorides, citric acid,
derivatives thereof, or a combination thereof ([0039] In such aspects, the MWSA comprises a biochelant, a peroxide and a solvent, each of the type disclosed previously herein. For example, the MWSA may comprise the biochelant, hydrogen peroxide and water.).
Per claim 18, An et al. disclose wherein the one or more biocides comprise
2,2-dibromo-3-nitrilopropionamide (DBNPA), tetrakis hydroxymethyl-phosphonium sulfates,
bronopol, (+)-tartaric acid, (1,3,4,5,6,7-hexahydro-1,3-dioxo-2H-isoindol-2-yl)methy
(d-Tetramethrin), (13Z)-Hexadec-13-en-11-yn-1-yl acetate, (9Z,12E)-tetradeca-9,12-
dien-1-yl acetate, (benzothiazol-2-ylthio)methyl thiocyanate (TCMTB),
(E)-1-(2-Chloro-1,3-thiazol-5-ylmethyl)-3-benzyloxy)methanol, methyl-2-nitroguanidine (Clothianidin), (ethylenedioxy)dimethanol (Reaction products of ethylene glycol with paraformaldehyde (EGForm)), (RS)-3-Allyl-2-methyl-4-(1R,3R)-2,2-dimethyl-3-(2-methyl
prop-1-enyl)-oxocyclopent-2-enyl cyclopropanecarboxylate (mixture of 2 isomers 1R trans: 1R/S only 1:3) (Esbiothrin), (1R,3S)-2,2-dimethyl-3-(2- methylprop-1-enyl)-cyclopropanecarboxy late (mixture of 4 isomers 1R trans, 1R:1R trans, 1S: 1R cis, 1R: 1R cis, 1S 4:4:1:1) (d-Allethrin), trans-3-(2,2-dichlorovinyl)-2,2-(RS)-q-cyano-3phenoxybenzyl-(1RS)-cis, dimethylcyclopropanecarboxylate (Cypermethrin), 1,2-benzisothiazol-3(2H)-one (BIT), 1,3-bis(hydroxymethyl)-5,5-dimethylinidazolidine-2,4-dione (DMDMH), 1-[2-(allyloxy)-2-(2,4-dichlorophenyl)ethyl]-1H-imidazole (Imazalil), 2,2-dibromo-2-cyanoacetamide (DBNPA), 2,2',2"-(hexahydro-1,3,5-triazine-1,3,5- triyl)triethanol (HHT), 4,4-dimethyloxazolidine, 4,5-Dichloro-2-octylisothiazol-3(2H)-one (4,5-Dichloro-2-octyl-2H-isothiazol-3-one (DCOIT)), 4-bromo-2-(4-chlorophenyl)-1-
ethoxy methyl-5-trifluoromethylpyrrole-3-carbonitrile (Chlorfenapyr), 4-bromo-2-(4-
methyl-5-trifluoromethylpyrrole-3-carbonitrile chlorophenyl)-1-ethoxy (Chlorfenapyr),
5-chloro-2-(4-chlorphenoxy)phenol (DCPP), 6-(phthalimido)peroxyhexanoic acid (PAP), 7a-ethyldihydro-1H,3H,5H-oxazolo[3,4-c]oxazole (EDHO), tetrakis(hydroxymethyl)phosphonium sulfate (THPS), and
tetrakis(hydroxymethyl)phosphonium chloride (THPC) or a combination thereof (Table 8; [0057] [0057] A comparison of the iron chelating ability was made and is detailed in Table 8. In Table 8 THPS refers to tetrakis(hydroxymethyl)phosphonium sulfate while EDTA refers to ethylenediaminetetraacetic acid.).
Per claim 20, An et al. disclose a formulation ([0015] Disclosed herein are compositions for use in facilitating resource recovery during wellbore servicing operations. In one or more aspects, the compositions disclosed herein may be employed in any aspect of wellbore servicing compatible with a user and/or process goal.; [0037] In an aspect, the MWSA functions to inhibit chlorine dioxide induced corrosion. In such aspects, the MWSA may comprise a biochelant of the type disclosed herein. For example, Figure 2 depicts a process flow diagram for the treatment of process water, 100.), comprising
(i) one or more biocides (Abstract, A multifunctional wellbore servicing additive composition includes a biochelant and at least one compound selected from the group consisting of acid, oxidizer, protectant, and surfactant.; [0039] In an aspect, the MWSA functions as an oxidizer, a metal chelator (e.g., Fe.sup.3+) and a biocide. Herein a biocide refers to a chemical intended to destroy, deter, render harmless, or exert a controlling effect on any harmful organism. In such aspects, the MWSA comprises a biochelant, a peroxide and a solvent, each of the type disclosed previously herein. For example, the MWSA may comprise the biochelant, hydrogen peroxide and water.);
(ii) one or more biochelants (Abstract, A multifunctional wellbore servicing additive composition includes a biochelant…); wherein a ratio of the one or more biocides to the one or more biochelants overlaps a range of 10:90 to about 90:10 ([0023] In an aspect, the MWSA is prepared as a concentrate having the biochelant present in an amount of from about 1 wt.% to about 70 wt.%, alternatively from about 20 wt.% to about 70 wt.%, alternatively from about 1 wt.% to about 10 wt.% or alternatively about 10 wt.% to about 50 wt.% based on the total weight of the MWSA.; [0027] The oxidizing agent may be present in the MWSA concentrate in an amount of from about 3 wt.% to about 50 wt.%, alternatively, from about 20 wt.% to about 34 wt.%, alternatively from about 34 wt.% to about 50 wt.% or alternatively from about 3 wt.% to about 8 wt.% based on the total weight of the MWSA.). Thus, when the biocide is, for example, 3% and the biochelant is, for example, 27%, the biocide to biochelant ratio is about 10:90 and when the biocide is, for example, 27% and the biochelant is, for example, 3%, the biocide to biochelant ratio is about 90:10. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, the range of about 10:90 to about 90:10, which lies within the range disclosed by An et al., is obvious in view of the disclosure of An et al.
Alternatively, it is submitted that it would have been a routine matter of optimization of a process effective variable to provide the biocide to biochelant ratio at about 10:90 to about 90:10 through routine experimentation, depending on anticipated contaminant loading, water quality and the results derived. Further, the examiner notes that applicant has not provided for the record a proper showing (e.g., comparative test data or an affidavit prior to closing of prosecution) of any new and unexpected result obtained by using the ratio range of about 10:90 to about 90:10.
An et al. also disclose (iii) a diluent ([0039] In an aspect, the MWSA functions as an oxidizer, a metal chelator (e.g., Fe.sup.3+) and a biocide. Herein a biocide refers to a chemical intended to destroy, deter, render harmless, or exert a controlling effect on any harmful organism. In such aspects, the MWSA comprises a biochelant, a peroxide and a solvent, each of the type disclosed previously herein. For example, the MWSA may comprise the biochelant, hydrogen peroxide and water.). An et al. do not disclose the one or more biochelants comprising gluconic acid or salts thereof and glucaric acid or salts thereof with minor component species of n-keto-acids, C₂ to C6 diacids or a combination thereof.
At any rate, de Rijk, also directed to a composition (Abstract, The present invention relates to compositions and their use for the treatment of water.), discloses (i) one or more biocides (claim 9, The composition as defined in claim 1, further comprising an effective amount of a bactericide.; [0173] Other agents include antimicrobials e.g., chlorhexidine, amine fluoride compounds, fluoride ions, hypochlorite, quaterinary ammonium compounds e.g. cetylpyridinium chloride, hydrogen peroxide, monochloramine, providone iodine, any recognized sanitizing agent or oxidative agent and biocides.) and (ii) one or more biochelants comprising gluconic acid or salts thereof and glucaric acid or salts thereof ([0154] As mentioned above, the salt carrier may contain other carrier materials, preferably in amounts from 0 to about 10 percent by weight of the tablet. These materials are preferably solid and include other carrier materials known in the art. These materials may be solid organic acids such as benzoic, gluconic, or sorbic acid. Use of such materials may allow the salt carrier to have beneficial activity, including biological activity, in the aqueous system. For example, gluconic acid, or its salts, may be used in a carrier matrix. But when the tablet is added to an aqueous system, the gluconic acid may additionally function as a metal chelant to sequester iron and prevent iron oxide staining.) with minor component species of n-keto-acids, C₂ to C6 diacids or a combination thereof ([0159] Corrosion inhibitors may optionally be added to the composition. Corrosion inhibitors, also known as anti-corrosive or anti-rust agents, reduce the degradation of the metallic parts contacted by the detergent and are incorporated at a level of about 0.1% to about 15%, and preferably about 0.5% to about 5% by weight of the total composition.; [0161] Other useful corrosion inhibitors include organic zinc complexes such as a zinc citrate, zinc hydroxy oxime complexes, and zinc copolymer complexes of acrylic acid ethacrylate; nitrogen and sulfur-containing aryl heterocycles; alkanolamines such as triethanolamine; amine-neutralized alkyl acid phosphates; dibasic acids-neutralized with amines, where the dibasic acids include, but are not limited to, adipic acid, succinic acid, sebacic acid, glutaric acid, malonic acid, suberic acid and examples of amines include, but are not limited to, methylamine, ethylamine, ethanolamine, diethanolamine, triethanolamine and N,N-dimethylcyclohexylamine, and mixtures thereof.) in order to, for example, facilitate biological activity in the water system and provide corrosion-inhibition in an environmentally-friendly manner (Abstract, This invention also provides compositions and their use to provide clean water in an environmentally-friendly manner.).
Accordingly, it would have been readily obvious for the skilled artisan to modify the composition of An et al. such that it comprises gluconic acid or salts thereof and glucaric acid or salts thereof with minor component species of n-keto-acids, C₂ to C6 diacids or a combination thereof in order to, for example, facilitate biological activity in the water system and provide corrosion-inhibition in an environmentally-friendly manner.
Regarding the formulation being a pharmaceutical formulation, it is submitted that recitation is one of intended use which fails to impose additional chemical structure on the formulation and is not given patentable weight. Further, it is submitted that the formulation of An et al. is capable of being used pharmaceutically without altering the structure, such as by topically applying the formulation to the skin.
Per claim 21, An et al., as modified by de Rijk, disclose wherein the ratio of the one or more biocides to the one or more biochelants overlaps a from about 20:80 to about 80:20 (see An et al., [0023] In an aspect, the MWSA is prepared as a concentrate having the biochelant present in an amount of from about 1 wt.% to about 70 wt.%, alternatively from about 20 wt.% to about 70 wt.%, alternatively from about 1 wt.% to about 10 wt.% or alternatively about 10 wt.% to about 50 wt.% based on the total weight of the MWSA.; [0027] The oxidizing agent may be present in the MWSA concentrate in an amount of from about 3 wt.% to about 50 wt.%, alternatively, from about 20 wt.% to about 34 wt.%, alternatively from about 34 wt.% to about 50 wt.% or alternatively from about 3 wt.% to about 8 wt.% based on the total weight of the MWSA.). Thus, when the biocide is, for example, 2% and the biochelant is, for example, 16%, the biocide to biochelant ratio is about 20:80 and when the biocide is, for example, 16% and the biochelant is, for example, 2%, the biocide to biochelant ratio is about 80:20. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, the range of about 20:80 to about 80:20, which lies within the range disclosed by An et al., is obvious in view of the disclosure of An et al.
Alternatively, it is submitted that it would have been a routine matter of optimization of a process effective variable to provide the biocide to biochelant ratio at about 20:80 to about 80:20 through routine experimentation, depending on anticipated contaminant loading, water quality and the results derived. Further, the examiner notes that applicant has not provided for the record a proper showing (e.g., comparative test data or an affidavit prior to closing of prosecution) of any new and unexpected result obtained by using the ratio range of about 20:80 to about 80:20.
Per claim 22, An et al., as modified by de Rijk, disclose wherein the ratio of the one or more biocides to the one or more biochelants overlaps a range from about 20:80 to about 80:20 (see An et al., [0023] In an aspect, the MWSA is prepared as a concentrate having the biochelant present in an amount of from about 1 wt.% to about 70 wt.%, alternatively from about 20 wt.% to about 70 wt.%, alternatively from about 1 wt.% to about 10 wt.% or alternatively about 10 wt.% to about 50 wt.% based on the total weight of the MWSA.; [0027] The oxidizing agent may be present in the MWSA concentrate in an amount of from about 3 wt.% to about 50 wt.%, alternatively, from about 20 wt.% to about 34 wt.%, alternatively from about 34 wt.% to about 50 wt.% or alternatively from about 3 wt.% to about 8 wt.% based on the total weight of the MWSA.). Thus, when the biocide is, for example, 2% and the biochelant is, for example, 16%, the biocide to biochelant ratio is about 20:80 and when the biocide is, for example, 16% and the biochelant is, for example, 2%, the biocide to biochelant ratio is about 80:20. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, the range of about 20:80 to about 80:20, which lies within the range disclosed by An et al., is obvious in view of the disclosure of An et al.
Alternatively, it is submitted that it would have been a routine matter of optimization of a process effective variable to provide the biocide to biochelant ratio at about 20:80 to about 80:20 through routine experimentation, depending on anticipated contaminant loading, water quality and the results derived. Further, the examiner notes that applicant has not provided for the record a proper showing (e.g., comparative test data or an affidavit prior to closing of prosecution) of any new and unexpected result obtained by using the ratio range of about 20:80 to about 80:20.
Per claim 23, An et al., as modified by de Rijk, disclose wherein the ratio of the one or more biocides to the one or more biochelants overlaps a range from about 20:80 to about 80:20 (see An et al., [0023] In an aspect, the MWSA is prepared as a concentrate having the biochelant present in an amount of from about 1 wt.% to about 70 wt.%, alternatively from about 20 wt.% to about 70 wt.%, alternatively from about 1 wt.% to about 10 wt.% or alternatively about 10 wt.% to about 50 wt.% based on the total weight of the MWSA.; [0027] The oxidizing agent may be present in the MWSA concentrate in an amount of from about 3 wt.% to about 50 wt.%, alternatively, from about 20 wt.% to about 34 wt.%, alternatively from about 34 wt.% to about 50 wt.% or alternatively from about 3 wt.% to about 8 wt.% based on the total weight of the MWSA.). Thus, when the biocide is, for example, 2% and the biochelant is, for example, 16%, the biocide to biochelant ratio is about 20:80 and when the biocide is, for example, 16% and the biochelant is, for example, 2%, the biocide to biochelant ratio is about 80:20. The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, the range of about 20:80 to about 80:20, which lies within the range disclosed by An et al., is obvious in view of the disclosure of An et al.
Alternatively, it is submitted that it would have been a routine matter of optimization of a process effective variable to provide the biocide to biochelant ratio at about 20:80 to about 80:20 through routine experimentation, depending on anticipated contaminant loading, water quality and the results derived. Further, the examiner notes that applicant has not provided for the record a proper showing (e.g., comparative test data or an affidavit prior to closing of prosecution) of any new and unexpected result obtained by using the ratio range of about 20:80 to about 80:20.
Claims 11-12 and 19 are finally rejected under 35 U.S.C. 103 as being unpatentable over An et al. (‘505) in view of de Rijk (‘580).
Per claim 11, An et al., as modified by de Rijk, do not explicitly disclose wherein the aqueous fluid comprises fresh water, salt water, deionized water, produced water, flowback water, brackish water, brine, seawater, or a combination thereof.
It is submitted that it would have been a routine matter of design choice to have the aqueous fluid comprise fresh water, salt water, deionized water, produced water, flowback water, brackish water, brine, seawater, or a combination thereof in order to, for example, dilute and/or dissolve the composition. Further, the examiner notes that applicant has not provided for the record a proper showing (e.g., comparative test data) of any new and unexpected result obtained by having the aqueous fluid comprise fresh water, salt water, deionized water, produced water, flowback water, brackish water, brine, seawater, or a combination thereof in order to, for example, dilute and/or dissolve the composition.
Per claim 12, An et al., as modified by de Rijk, do not explicitly disclose wherein the system comprises cooling towers, boilers, evaporators, heat exchangers, chillers, reverse osmosis/filtration systems, and distillation/separation processes or a combination thereof.
It is submitted that it would have been well within the purview of thew skilled artisan to modify the method of An et al., as modified by de Rijk, such that it comprises wherein the system comprises cooling towers, boilers, evaporators, heat exchangers, chillers, reverse osmosis/filtration systems, and distillation/separation processes or a combination thereof in order to, for example, reduce corrosion, inhibit or reduce bacterial formation and decrease soluble metal species within the system.
Per claim 19, An et al., as modified by de Rijk, do not explicitly disclose wherein a minimum inhibitory concentration of the composition is reduced by from about 5% to about 100% when compared to a minimum inhibitory concentration of the at least one biocide in an absence of the one or more biochelants.
It is submitted that it would have been a routine matter of design choice to modify the composition of An et al. such that it comprises wherein a minimum inhibitory concentration of the composition is reduced by from about 5% to about 100% when compared to a minimum inhibitory concentration of the at least one biocide in an absence of the one or more biochelants, depending on anticipated bacteria loading and the results desired. Further, absent a proper showing of criticality with respect to the recited composition concentration percentage range, it would have been obvious to a person of ordinary skill in the art at the time of the invention to adjust or reduce the concentration through routine experimentation in order to achieve a concentration percentage that allows for a balance of bacterial inhibition and water treatment relative to an absence of the one or more biochelants, depending on the anticipated contaminant loading and the results desired. Moreover, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed April 23, 2026 have been fully considered but they are not persuasive.
Applicant argues that An et al. do not disclose "wherein a ratio of the one or more biocides to the one or more biochelants is from about 10:90 to about 90:10" and further alleges that the component percentages within the MWSA itself do not constitute disclosure of a biocide: biochelant ratio and even if a ratio were calculable from An's disclosed ranges, such a range of ratios would be far too broad to amount to a disclosure of about 10:90 to about 90:10 range as recited in the amended independent claims. The examiner respectfully disagrees. As indicated above by the examiner, An et al. disclose wherein the ratio of the one or more biocides to the one or more biochelants at least overlaps a range from about 10:90 to about 90:10 (see An et al., [0023] In an aspect, the MWSA is prepared as a concentrate having the biochelant present in an amount of from about 1 wt.% to about 70 wt.%, alternatively from about 20 wt.% to about 70 wt.%, alternatively from about 1 wt.% to about 10 wt.% or alternatively about 10 wt.% to about 50 wt.% based on the total weight of the MWSA.; [0027] The oxidizing agent may be present in the MWSA concentrate in an amount of from about 3 wt.% to about 50 wt.%, alternatively, from about 20 wt.% to about 34 wt.%, alternatively from about 34 wt.% to about 50 wt.% or alternatively from about 3 wt.% to about 8 wt.% based on the total weight of the MWSA.). The courts have held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Accordingly, the range of about 10:90 to about 90:10, which lies within the range disclosed by An et al., is obvious in view of the disclosure of An et al. Alternatively, the examiner submits that it would have been a routine matter of optimization of a process-effective variable to provide the biocide to biochelant ratio at about 10:90 to about 90:10 or 20:80 to about 80:20 through routine experimentation, depending on anticipated contaminant loading, water quality and the results derived. Further, the examiner noted that applicant has not provided for the record a proper showing (e.g., comparative test data or an affidavit prior to closing of prosecution) of any new and unexpected result obtained by using the ratio range of about 10:90 to about 90:10 or 20:80 to about 80:20. Accordingly, while applicant’s arguments have been reviewed and carefully considered, the arguments are not persuasive of patentability.
Applicant argues that An et al. do not disclose comprising gluconic acid or salts
thereof and glucaric acid or salts thereof with minor component species of n-keto-acids, C₂ to Ce diacids or a combination thereof and does not disclose a biocide to biochelant ratio of about 10:90 to about 90:10. However, as indicated above in the instant rejection, de Rijk discloses providing gluconic acid or salts thereof and glucaric acid or salts thereof with minor component species of n-keto-acids, C₂ to Ce diacids or a combination thereof in order to, for example, facilitate corrosion inhibition in an environmentally friendly manner. Further, the examiner disagrees with applicant’s assertion regarding the biocide to biochelant ratio of about 10:90 to about 90:10 which is rendered obvious by the disclosure of An et al. and/or through routine optimization as indicated above. Accordingly, while applicant’s arguments have been reviewed and carefully considered, the arguments are not persuasive of patentability.
Claims 1, 3-6, 8-13, 15-23 are not allowable for the reasons provided above.
For the reasons provided above, a holding of obviousness is required.
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 FRED PRINCE whose telephone number is (571)272-1165. The examiner can normally be reached M-W: 0900-1730.
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/FRED PRINCE/
Primary Examiner
Art Unit 1779
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