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 .
Election/Restrictions
Applicant’s election of Group III, claims 19-20, in the reply filed on 01/23/26 with traverse is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). As such, claims 1-18 have been withdrawn as being drawn to non-elected inventions.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 19-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Elected dependent claim 19 is drawn to method of inhibiting corrosion of a metallic surface, comprising: adding the composition of claim 1 to a medium in a subterranean formation, wellhead, and/or pipeline, wherein the medium comprises the metallic surface. Elected dependent claim 19 is indefinite because it is directly dependent on independent claim 1 which is itself deemed to be indefinite.
Likewise, elected dependent claim 20 is drawn to method of inhibiting corrosion of a metallic surface, comprising: adding the composition of claim 10 to a medium in a subterranean formation, wellhead, and/or pipeline, wherein the medium comprises the metallic surface. Elected dependent claim 19 is indefinite because it is directly dependent on independent claim 10 which is itself deemed to be indefinite.
Independent claims 1 and 10 are both drawn to compositions and are deemed to be individually indefinite in regards the what actual components fall within “a liquid treatment chemical selected from the group consisting of a hydrate inhibitor, an asphaltene inhibitor, a paraffin inhibitor, a demulsifier, a biocide, a scale inhibitor, a corrosion inhibitor, and any combination thereof.” [Emphasis added]. The problem here is that Applicant’s specification set forth numerous species of demulsifiers, scale inhibitors and corrosion inhibitors according to the invention that are in fact solid at room temperature. As way of illustration only, maleic anhydride is disclosed as a demulsifier according the invention (see paragraph [0078] of Spec.) but is known to be a solid at room temperature. Likewise, EDTA and HEDP phosphonates are disclosed to be scale inhibitors (see paragraphs [0080] and [0082] of Spec.) according to the invention but are known to individually be solid at room temperatures. As such, from here on out, Applicant’s phrase: “a liquid treatment chemical” will be deemed to encompass either a liquid or a solid component.
Furthermore the method of dependent claim 20 is deemed to be further indefinite because it is dependent on independent claim 10 which is drawn to a composition that is disposed within a water-soluble container. It is very unclear if the composition is removed from the water soluble container before use, or is pre-dissolved in an aqueous fluid before injection into the subterranean formation and/or pipeline or whether the composition still within the water-soluble container is directly injected into the subterranean formation or directly added to the pipeline. As such, from here on out, applicant’s method of inhibiting corrosion of a metallic surface will be deemed to read on anyone of the above said possibilities.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
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.
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.
EXAMINATION NOTE:
The Examiner wants to clearly point out how Applicant defines “a water-soluble container” as set forth in independent claim 10 from which elected claim 20 directly depends, because it is much more expansive in scope than one having ordinary skill in the art would envisaged. Applicant’s specification paragraph [0067] reads as followed: “The term "water-soluble," as used herein, refers to the capability of being at least partially soluble and subsequently partially dispersible (e.g., at least about 70% dispersible) to nearly completely dispersible (e.g., about 100% dispersible) in an aqueous solution, such as water. Contacting the water-soluble container can result in fragmentation of the composition into particulates and/or micro-particulates, where a water-dispersible layer or sheet can form such particulates in an aqueous solution. Water-soluble materials, as referenced herein, include materials and papers referred to in the art as "water-soluble," where only a portion of the paper may be actually soluble in water, but dissolution of this soluble portion results in dispersion of most or all of the remaining structure.”.
Claim(s) 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 111154470 A.
CN 111154470 A discloses corrosion control of oil fields, and discloses a slow-release solid corrosion inhibitor, a preparation method and application thereof, wherein the slow-release solid corrosion inhibitor comprises, by weight, 30%-55% of a composite corrosion inhibitor, 1%-5% of an organic filler, 25%-45% of a functional weighting agent, 10%-20% of an adhesive and 0.1%-0.5% of a hydrophobic coating material. Adding the composite corrosion inhibitor, the organic filler, the functional weighting agent and the adhesive in turn into a batching tank with a stirrer, and stirring to uniformly mix the materials; molding the obtained mixture by using an injection molding machine to prepare particles with the length of 5-10 mm and the diameter of 5-8 mm; adding hydrophobic coating material on the particles, and finally stirring to uniformly mix the particles to obtain the slow-release solid corrosion inhibitor. The effective components of the corrosion inhibitor can be slowly released, the effective period of action is long, the corrosion inhibition effect is good, and the preparation process is simple; the corrosion-resistant coating is used for corrosion prevention of a well shaft and a pipe column of an oil production well. (see abstract and claim 1).
CN 111154470 A’s independent claim 1 reads as followed: “A slow-release type solid corrosion inhibitor, it is characterized in that, described slow-release type solid corrosion inhibitor is composed of composite corrosion inhibitor 30%～55%, organic filler 1%～5%, functional weighting agent by weight 25%-45%, adhesive 10%-20% and hydrophobic coating material 0.1%-0.5%.
CN 111154470 A’s dependent claim 2 reads as followed: “Slow-release solid corrosion inhibitor as claimed in claim 1, is characterized in that, described composite corrosion inhibitor is the mixture of imidazoline quaternary ammonium salt, polyphosphate, mercaptobenzothiazole, imidazoline quaternary ammonium salt The weight ratios of polyphosphate and mercaptobenzothiazole are respectively 40% to 60%, 20% to 35%, and 5% to 15%”.(Note: mercaptobenzothiazole is well known in the art to function as both a corrosion inhibitor and as a biocide. Likewise, imidazoline quaternary ammonium salts are also well known in the art to function as both a corrosion inhibitor and as a biocide.).
CN 111154470 A’s dependent claim 3 reads as followed: “The slow-release solid corrosion inhibitor according to claim 1, wherein the organic filler is polyacrylamide, and the molecular weight is 2 million to 3 million; the functional weighting agent is potassium sulfate and sodium bicarbonate at least one.”. (Note: sodium bicarbonate reads directly on Applicant’s powder component of independent claim 1).
Applicant’s claims 19-20 are deemed to be directly anticipated when CN 111154470 A’s said corrosion inhibitor compositions are actually used for corrosion prevention of a well shaft and pipe column in an oil production well ( i.e. a subterranean formation), since that is the disclosed intended use of CN 111154470 A’s corrosion inhibitor compositions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764