FINAL REJECTION
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 (drawn to a method of inhibiting corrosion of a metallic surface), 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 As such, claims 1-18 (drawn to a composition) have been withdrawn as being drawn to non-elected inventions.
In Applicant’s amendment filed 06/03/26, applicant added new compositions claims 21-36, and also a new claim drawn 37 drawn to a method of inhibiting corrosion of a metallic surface. Claims 21-36 are thus withdrawn from further consideration as being drawn to a non-elected invention. Only new independent claim 37 will be examined along with independent claims 19-20.
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 20 and 37 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.
The methods of independent claim 20 and independent claim 37 are deemed to be indefinite because 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 that Applicant defines “a water-soluble container”, as set forth in independent claims 20 and 37, in a much more expansive way than one having ordinary skill in the art would at once 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) 20 and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dunaway et al. U.S. Patent Application Publication No.: 2004/0115378 A1.
Dunaway et al. discloses an apparatus and method for the controlled release of chemical additives within piping and wellbores. The apparatus is a water dispersible container that controls the release of one or more chemical additives such as corrosion inhibitors, oxygen scavengers, or biocides. The dispersible container is comprised of polyvinyl alcohol chains. The selection of the chains is determined by the application of the container and includes short-chained cold water-soluble polyvinyl alcohols, long-chained hot water-soluble polyvinyl alcohols, or vinyl alcohol co-polymers. In the method for the controlled release of chemical additives, the container is placed in a pipe or tank for circulation throughout a wellbore. Alternatively, the container is placed in a cap for a subsea well bore.
Applicant’s attention is drawn to Dunaway et al.’s EXAMPLE 3 which teaches a water dissolvable/dispersible pouch made from polyvinyl alcohol film. Said pouch contains an EC1120A liquid corrosion inhibitor from Nalco/Exxon Energy Chemicals. When said pouch is used in a process of inhibiting corrosion of a metal surface, such as piping and/or wellbores (see abstract and claims), applicant’s claims 20 and 37 are directly anticipated.
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Dunaway et al. U.S. Patent Application Publication No.: 2004/0115378 A1 in view of either CN 111154470 A or Jenkins U.S. Patent Application Publication No.: 2011/0028360 A1.
Dunaway et al. has been described above and differs from applicant’s claimed invention in that there is not a direct disclosure to where the one or more chemical additives such as corrosion inhibitors, oxygen scavengers, or biocides are actually selected from applicant’s specifically claimed powder components as set forth in independent claim 19.
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).
Jenkins discloses an acidizing composition useful for treating a subterranean hydrocarbon producing formation and removing scale from oilfield equipment, the composition including: an acid; water; and an effective amount of a corrosion inhibitor composition including: at least one mercapto-compound; and at least one alkoxylated acetylenic alcohol. Also disclosed are methods for removing scale from metal surfaces and for treating a subterranean hydrocarbon producing formation with such an acidizing composition whereby the corrosive effects of the acidizing composition on metal surfaces in contact therewith are reduced, see abstract.
Jenkins directly teaches that citric acid (a solid at room temperature) is an effective scale inhibitor for metal surfaces, such as pipes, in contact with subterranean hydrocarbon production formations, see claims, such as claims 1-6, 12 and 31.
It would have been obvious to one having ordinary skill in the art to use the disclosure of either secondary reference to CN 111154470 A (for sodium bicarbonate) or Jenkins (for citric acid), as providing strong motivation to actually incorporate either sodium bicarbonate and/or citric acid as an additional corrosion inhibitor additive (sodium bicarbonate) and/or citric acid as a scale inhibitor, into Dunaway et al.’s water dissolvable/dispersible pouch made from (e.g. polyvinyl alcohol film) which already contains a liquid corrosion inhibitor. Such a combination is well motivated for one having ordinary skill in the art because all said three references are drawn to the exact same purpose of preventing/mitigating corrosion of metal surfaces involved with petroleum production/transportation. It is well established that it is not inventive to merely follow the direct disclosure of prior-art references. It is also well established that to use two or more compounds/components together for the same purpose they are individually known is not inventive outside a clear showing of unexpected and superior results, see In re Kerkhoven (262 F. 2d 846, 850, 205 USPQ 1069, 1072).
Response to Arguments
Applicant’s arguments with respect to claim(s) 19-20 have been considered but are moot because of the new ground of rejections.
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 JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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, 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
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