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 Status
Claims 1-16 and 18-24 were amended and claim 17 was canceled in the response filed 5/11/2026. Claims 1-16 and 18-21 are pending.
Election/Restrictions
Applicant’s election without traverse of the following species in the reply filed on 1/27/2026 is acknowledged:
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The election appears to read on claims 1-16 and 18-21, wherein the compound is a multiple charged cationic compound having 2 or more positive charges as defined by Y. The scope of the search was extended to the following tetra-anionic compound:
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, which is produced by reacting pentamine (a polyamine having 5 amine groups) with 2-acrylamido-2-methyl propane sulfonic acid Michael acceptor in an aza-Michael reaction. Also see MPEP 2113. The Michael acceptor corresponds to the second formula in claim 1, wherein R2 is H; X is NH; R3 is -C(CH3)2- (a branched unsubstituted C3 alkyl); and Y’ is -SO3Na (the sodium salt of -SO3H).
Withdrawn Objections
The drawings and amended specification filed on 5/11/2026 appear to be acceptable; therefore, the objections of record on p. 3-4 of the OA dated 3/11/2026 are withdrawn.
The amendments filed on 5/11/2026 are persuasive to overcome the claim objections of record on p. 4 of the OA dated 3/11/2026. Therefore, the objections are withdrawn.
Provisional Claim Objections
Applicant is advised that should claim 2 be found allowable, claim 5 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Withdrawn Claim Rejections - 35 USC § 112(b)
The amendment to claim 5 is persuasive to overcome the rejection of record on p. 5 of the OA dated 3/11/2026. Therefore, the rejection is withdrawn.
New Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 11-12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The following options in claim 6: MAPTAC, DMAEA-MCQ, DMAEA-BCQ, and DMAEMA-MSQ all fail to further limit claim 1 because they correspond to compounds of the first and second Michael acceptors wherein X is O. X was limited to NH in the most recent amendments.
The compound shown in claim 11 teaches that n can be 0, which would correspond to the polyamine being a diamine and only having 2 amine groups. The first compound in claim 12 shares the same issue. Independent claim 1 was amended to require a polyamine having at least 3 amine groups. Therefore, these options fail to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
The compound(s) in the reverse emulsion breaker composition are defined by product-by-process limitations. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP 2113.
Regarding the intended use of the composition as a “reverse emulsion breaker composition” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02.
Further, the term “additional reverse emulsion breaker composition agents” is discussed on p. 22-23, [0093-0099] of the specification as filed.
Modified Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The Applicant amended claim 1 to recite “a reverse emulsion breaker composition for resolving a reverse emulsion in a produced fluid from an oil and gas production system, the reverse emulsion breaker composition comprising one or more compounds derived from an aza-Michael addition reaction between a polyamine (Michael donor) and an activated olefin (Michael acceptor) …
X is NH…
wherein the polyamine comprises 3 or more amine groups…
and the composition comprises one or more additional reverse emulsion breaker composition agents.
Regarding the rejections of record on p. 5-16 of the OA dated 3/11/2026:
Dhawan (US2019/0062187A1, published on 2/28/2019), Yu (CN106750235A, published on 5/31/2017), and Boday (US2016/0264734A1, published on 9/15/2016)
do not teach an example wherein the polyamine comprises 3 or more amine groups and/or the presence of the compound in a reverse emulsion breaker composition comprising one or more additional reverse emulsion breaker composition agents. Yu, Boday, Morinaga (WO2009/153209A1, published on 12/23/2009), Peng (“Synthesis and Application of Polyoxyethylene-Grafted Cationic Polyamidoamine Dendrimers as Retention Aids” Journal of Applied Polymer Science, 2007, p. 3468), and Schaper (US 4166894, published on 9/4/1979) further fail to teach an example wherein x is NH. Schaper also fails to teach an example wherein the polyamine comprises 3 or more amine groups. Therefore, these rejections are withdrawn. Also see arguments on p. 14-16 of the response.
However, in view of the amendments, the following new rejection is introduced:
Claim(s) 1-10, 16, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ciba (GB1550420, published on 8/15/1979) as evidenced by Tetraethylenepentamine (https://pubchem.ncbi.nlm.nih.gov/compound/Tetraethylenepentamine, downloaded on 6/17/2026) and SciFinder (CAS Registry Number: 64062-81-3, downloaded on 6/17/2026).
Ciba teaches compositions comprising compounds of formula (1) which show excellent foaming properties and a good calcium compatibility when used in aqueous solutions as surfactants. The composition further improves the surface-active properties of aqueous compositions. See claims 1 and 20-23 and p. 4, lines 35-41. Ciba teaches the following compound in claim 13:
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. This compound corresponds to a single tetra-anionic (having 4 negative charges-claim 10) water-soluble compound/molecule of claims 1, 8, and 16. The compound is prepared in Example 9 (p. 6-7) by reacting pentamine (a polyamine having 5 amine groups) with 2-acrylamido-2-methyl propane sulfonic acid Michael acceptor in an aza-Michael reaction. Also see MPEP 2113. The Michael acceptor corresponds to the second formula in claim 1, wherein R2 is H; X is NH; R3 is -C(CH3)2- (a branched unsubstituted C3 alkyl); and Y’ is -SO3Na (the sodium salt of -SO3H) and the AMPS compound in option (iii) of claim 6. The hygroscopic (water soluble) compound was present in an aqueous composition (claim 19) comprising water (a carrier of claims 18 and 20) and calcium nitrate. Ciba teaches that both the water and the calcium nitrate (inorganic salt) can be interpreted to be “one or more additional reverse emulsion breaker composition agents” as defined in the specification as filed. See claim interpretation section above.
Ciba does not explicitly teach that the composition can resolve a reverse emulsion in a produced fluid from an oil and gas production system. However, the compositions of Ciba meet all of the explicitly claimed structural limitations in the composition, including the claimed water-soluble compound which can increase the surface activity of aqueous solutions. Therefore, the compound of Ciba is expected to possess utility as a reverse emulsion breaker in an aqueous composition. See example 7 on p. 73-78 and [0022-0023] of the specification as filed. Also see MPEP 2112.
Further regarding the polyamine, pentamine is a unmodified polyamine of formula H2N-(RNH)n-RNH2, wherein n is 3 and R is -CH2-CH2-, comprising (i) only primary and secondary amine groups of claims 2-5. As evidenced by Tetraethylenepentamine, the molecular weight of the polyamine is 189.30 g/mol (Da), which falls within the range of claim 7. As evidenced by SciFinder, the molecular weight of the product of example 9 of Ciba is 1800.97 g/mol (Da), which falls within the range of claim 9. Also see MPEP 2131.
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. See p. 16-25 of the OA dated 3/11/2026 regarding the rejections of record.
The Applicant amended independent claim 1 as indicated above. Regarding the 35 USC 103 rejections of record of:
Claim(s) 1, 3, 5-12 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaper (US 4166894, published on 9/4/1979) as evidenced by the SciFinder entry for (US 4166894 (AN 1975:606793), obtained 3/5/2026); and
Claim(s) 1-10 and 13-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peng (“Synthesis and Application of Polyoxyethylene-Grafted Cationic Polyamidoamine Dendrimers as Retention Aids” Journal of Applied Polymer Science, 2007, p. 3468) in view of Manek (US 2006/0289359, published on 12/28/2006),
the Applicant argues on p. 18-19, that Schaper does not teach or suggest the use of polyamines having at least three amine groups, and only contemplates diamines. This argument is persuasive, therefore the Schaper rejection is withdrawn. The Applicant also argues that the combination of Peng and Manek fail to teach the instantly claimed limitations wherein X = NH in the Michael acceptor. Specifically, Applicant argues:
“Peng alone or in combination with Manek also fail to teach, suggest or motivate a person skilled in art to arrive at the present claims requiring X = NH. Peng teaches only DAC (acryloyloxyethyl trimethylammonium chloride), which has X = 0 (an ester linkage). The Examiner has alleged it would be obvious to substitute X = 0 with X = NH because Manek teaches that amide functionalities can be tolerated in dendrimer compounds. However, this argument conflates the internal amide bonds present in the PAMAM dendrimer backbone with the linking group of the activated olefin (Michael acceptor). The presence of amide bonds within the PAMAM backbone structure does not teach or suggest changing the ester linkage in DAC to an amide linkage to arrive at an acrylamide-based Michael acceptor such as APTAC.
Importantly, Manek does not teach aza-Michael addition chemistry at all. Manek's quaternization is achieved through alkylation with alkyl halides, benzyl halides, and dialkyl sulfates, which is fundamentally different chemistry from the aza-Michael addition reaction recited in claim 1. See Manek, [0012]. There is no teaching, suggestion, or motivation in either Peng or Manek to use an acrylamide-based activated olefin (X = NH) in an aza-Michael addition reaction. As the Supreme Court explained in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 82 USPQ2d 1385, 1396 (2007), "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art" and "it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does."
The Examiner's characterization of APTAC as a "one-carbon amide homolog" of DAC understates the structural differences between these compounds. The change involves both replacing the ester linkage with an amide linkage and changing the spacer group. This reasoning amounts to impermissible hindsight reconstruction, using the claims as a roadmap to combine references that do not themselves suggest the claimed combination. As the Federal Circuit cautioned in TQ Delta, LLC v. CISCO Systems, Inc., 942 F.3d 1352, 1361 (Fed. Cir. 2019), courts must guard against "allowing the challenger to use the challenged patent as a roadmap to reconstruct the claimed invention using disparate elements from the prior art-i.e., the impermissible ex post reasoning and hindsight bias that KSR warned against." Furthermore, as set forth in MPEP § 2142, "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).”
This argument has been fully considered and is persuasive. Therefore, the rejection over Peng and Manek is withdrawn.
However, in view of the amendments, the following new rejection is introduced:
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ciba (GB1550420, published on 8/15/1979) as evidenced by Tetraethylenepentamine (https://pubchem.ncbi.nlm.nih.gov/compound/Tetraethylenepentamine, downloaded on 6/17/2026) and SciFinder (CAS Registry Number: 64062-81-3, downloaded on 6/17/2026), as applied to claims 1-10, 16, and 18-20 above.
Applicant claims a composition comprising an additional surfactant. Ciba teaches that the compounds of formula (I) are surfactants, but does not teach mixtures of compounds of formula (I) with each other or other surfactants. See p. 4, lines 35-42. Ciba also teaches that the compounds of formula (I) are very calcium tolerant for sequestering calcium from hard water and don’t require additional sequestering agents. See p. 1, lines 1-20. Example 11 on p. 8 shows that the compounds obtained in examples 1 and 9 tolerate the highest amounts of calcium as CaCO3.
It would have been prima facie obvious to arrive at the instantly claimed invention with a reasonable expectation of success based on the teachings Ciba with a reasonable expectation of success before the effective filing date of the claimed invention. A person of ordinary skill would have been motivated to combine compounds of formula (1), including anticipatory example 9, to form a mixture because “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). See MPEP 2144.06. Therefore, an aqueous solution comprising a mixture of anionic surfactant compounds of formula (1) of Ciba would predictably result in another composition of surfactants which will have the same utility as a composition of each of the surfactants separately.
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.
See p. 27-35 of the OA dated 3/11/2026 regarding rejections of record. The Applicant’s amendments to claim 1 are persuasive to overcome the following provisional and non-provisional rejections over: Co-pending US App. no. 18/304567; Co-pending US App. no. 18/069681; US 1084974; US 11058111; US 11359291; US 11236040; US 11292734; and US 11021383. The rejections not withdrawn are maintained and modified to address claim amendments below.
Claims 1-16 and 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11702586 (‘586).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 discloses a composition comprising the species of claims 11 and 12. Said species are derived from derived from the reaction between an unmodified a linear polyamine of formula H2N-(RNH’)n-NH2, wherein R is -CH2-CH2-, having primary and secondary amine groups (claims 2-5, 7, and 9) and APTAC (claim 6), an activated olefin of the first claimed formula wherein R2 is H; X is NH; R3 is -CH2-CH2- (C2 alkyl); and Y is NR4R5R6(+), wherein R4, R5, and R6 are methyl (C1 alkyl)) to produce a compound having at least four positive charges (claims 1, 8, and 10). Regarding claims 13-15, see claims 2, 4, 5, and 10 and 11. Regarding claims 16 and 18-21, see claims 14-16. Further, though the intended use of the composition of ‘586 is different than that claimed, the compositions comprise the same components, including additional reverse emulsion breaker composition agents, see claim 15.
Claims 1-10, 13-16, and 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 12082580 (‘580).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 32 of ‘580 teaches a composition comprising one or more additional fouling control agents and the claimed compounds wherein the polyamine is ethoxylated before or during the aza-Michael reaction (option iii in claim 3) and corresponds to compounds of formula H2N-(RNH’)n-NH2, wherein R is -CH2-CH2- or -CH2-CH2-OH, having primary, secondary, and tertiary amine groups (claims 2-5). See claim 32. The activated olefins include those from claim 6, including APTAC, an activated olefin of the first claimed formula wherein R2 is H; X is NH; R3 is -CH2-CH2- (C2 alkyl); and Y is NR4R5R6(+), wherein R4, R5, and R6 are methyl (C1 alkyl)) to produce a compound having at least four positive charges (claims 1, 8, and 10). See claims 12-13. Regarding claims 7, 9, and 13-15, see claims 3-10. Regarding claims 16 and 18-21, see claims 15-24 and 32. Though the intended use of the composition of ‘580 is different than that claimed, the compositions comprise the same components, including additional reverse emulsion breaker composition agents, see claims 24-25.
Claims 1-10, 13-16, and 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11639553 (‘553).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘553 teach a composition comprising one or more corrosion control composition agents and the claimed compounds wherein the polyamine is ethoxylated before or during the aza-Michael reaction (option iii in claim 3) and corresponds to compounds of formula H2N-(RNH’)n-NH2, wherein R is -CH2-CH2- or -CH2-CH2-OH, having primary, secondary, and tertiary amine groups (claims 2-5). The activated olefins include those from claim 6, including APTAC, an activated olefin of the first claimed formula wherein R2 is H; X is NH; R3 is -CH2-CH2- (C2 alkyl); and Y is NR4R5R6(+), wherein R4, R5, and R6 are methyl (C1 alkyl)) to produce a compound having at least four positive charges (claims 1, 8, and 10). See claims 2-11 Regarding claims 7, 9, and 13-15, see 2-13. Regarding claims 16 and 18-21, see claims 15-20. Though the intended use of the composition of ‘553 is different than that claimed, the compositions comprise the same components, including additional reverse emulsion breaker composition agents, see claim 16.
Claims 1-10, 16, and 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12202784 (‘784).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘784 teach a composition comprising the claimed compounds wherein the polyamine is ethoxylated before or during the aza-Michael reaction (option iii in claim 3) and corresponds to compounds of formula H2N-(RNH’)n-NH2, wherein R is -CH2-CH2- or -CH2-CH2-OH, having primary, secondary, and tertiary amine groups (claims 2-5). See claims 9-15. The activated olefins include those from claim 6, when the activated olefin of the first claimed formula wherein R2 has Y is NR4R5R6(+), wherein R4, R5, and R6 are methyl (C1 alkyl)) to produce a compound having one or more positive charges (claims 1, 8, and 10). See claims 1 and 16. Regarding claims 7 and 9, see claim 15. Regarding claims 16 and 18-21, see claims 16-20. Though the intended use of the composition of ‘784 is unspecified, the compositions comprise the same components, including additional reverse emulsion breaker composition agents, see claims 17-20.
Claims 1-16 and 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11926543 (‘543).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of ‘543 discloses a composition which requires the species of claims 11 and 12 and one or more water clarification composition agents. Said species are derived from derived from the reaction between an unmodified a linear polyamine of formula H2N-(RNH’)n-NH2, wherein R is -CH2-CH2-, having primary and secondary amine groups (claims 2-5, 7, and 9) and APTAC (claim 6), an activated olefin of the first claimed formula wherein R2 is H; X is NH; R3 is -CH2-CH2- (C2 alkyl); and Y is NR4R5R6(+), wherein R4, R5, and R6 are methyl (C1 alkyl)) to produce a compound having at least four positive charges (claims 1, 8, and 10). Regarding claims 13-15, see claim 14. Regarding claims 16 and 18-21, see claims 15-19. Though the intended use of the composition of ‘543 is different from that claimed, the compositions comprise the same components, see claims 15-19.
On p. 21-23, the Applicant traverses the rejections over ‘586, ‘580, ‘553, ‘784 and ‘543 because they argue that even if two inventions are related, they may be considered distinct if the inventions as claimed are not connected in any of design, operation or effect. Applicant argues that the compositions disclosed in the patents above are distinct from the instant composition because they have different intended uses and because the instant application requires “one or more additional reverse emulsion breaker composition agents”. With further respect to ‘784, Applicant argues that the claims of ‘784 are directed to multiple charged ionic compounds derived from polyamines through both an aza-Michael addition and a ring-opening reaction with an epoxide, which the instant claims do not require. The Applicant’s arguments have been fully considered but are not persuasive. Regarding the intended use of the composition as a “reverse emulsion breaker composition” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02. As argued above, the compositions comprise the same compounds and an additional component which is explicitly recited as a “reverse emulsion breaker” or a component which falls within the scope of “additional reverse emulsion breaker composition agents” as discussed on p. 22-23, [0093-0099] of the specification as filed. Further regarding ‘784, the instant claims comprise compounds wherein the polyamine is ethoxylated before or during the aza-Michael reaction (option iii in claim 3) and corresponds to compounds of formula H2N-(RNH’)n-NH2, wherein R is -CH2-CH2- or -CH2-CH2-OH, having primary, secondary, and tertiary amine groups (claims 2-5). Thus the scope of compounds in the instant claims and those of ‘784 overlap. Therefore, Applicant’s arguments are not persuasive.
Subject Matter free from the Prior Art
The compositions of claims 11-15 appear to be free from the prior art. The closest prior art to the claimed inventions is that of record. The claims are distinguished form the prior art for the reasons set forth 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 AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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/AMY C BONAPARTE/ Primary Examiner, Art Unit 1692
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