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 I, an asphaltene inhibitor physically entrapped within and/or bound to the carrier material for the nanoparticles, silica matrix for the matrix, and a core comprising the asphaltene inhibitor for the core-shell structure, claims 1-4, 6-15, 20, 21 and 25 in the reply filed on 14 September 2026 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)).
Claims 5, 16-19 and 31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim.
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.
Claims 1-4, 6-8, 10-15, 20, 21 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 15-17 of U.S. Patent No. 12404439B2. Although the claims at issue are not identical , they are not patentably distinct from each other because the patented claims are directed to the same nanoparticle of the same core-shell configuration of the similar size, thickness, amount of asphaltene inhibitor as well as silica matrix and surface modifier, which fully anticipates the instant claims.
Claims 1-4, 6-8, 10-12, 15, 20, 21 and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-12 and 16-19 of copending Application No. 19293748. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are directed to the same nanoparticle of the same core-shell configuration of the similar size, thickness, amount of asphaltene inhibitor as well as silica matrix and surface modifier, which fully anticipates the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites the limitation "the surface modifying agent" . There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 2, 4, 6-7, 8, 9, 12, 20 and 25 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US2018/0298274A1(Zhao), which is listed in Applicant’s information disclosure statement, as evidenced by US20190292112A1 (Yvin).
Regarding claims 1, 2, 4 and 7, Zhao teaches a microcapsule comprises a core comprising an oil field chemical entrapped within a micro-matrix and a shell ([0118]), which meets a core-shell structure, wherein the shell comprises silica ([0108]), and the microcapsule can have an average particle size of between 0.1 μm and 500 μm, inclusive ([0131]), the lower inclusive end point 0.1 μm , i.e., 100 nm anticipates the claimed nanoparticle size.
Zhao teaches that the oil field chemical includes asphaltene inhibitors ([0091]).
Regarding claim 6, Zhao teaches the outer surface of the microcapsules contains one or more chemical groups that promote the dispersibility of the microcapsules in the base fluid ([0134] and [0182]), which meets a surface modifying agent.
Regarding claims 8 and 12, Zhao teaches that the microcapsule is permeable ([0158]), which anticipates open-celled porous matrix and porous shell.
Regarding claim 9, it is known that silica exists in crystalline form and amorphous form as evidenced by Yvin ([0024]).
Regarding claims 20 and 25, Zhao teaches a well treatment composition comprises the microcapsules([0163] and [0201]), wherein the release of the oil field chemical from the microcapsules can last to more than 3 months ([0161]).
Claims 1-4, 7, 20 and 25 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US2017/0349811A1(Yan).
Regarding claims 1-2 and 20, Yan teaches a nanoparticle comprises a nanoparticulate carrier material and a well treatment additive such as an asphaltene inhibitor ([0036] and [0047]), which provides extended or sustained release of the treatment additive in a subterranean well ([0036]), wherein the nanoparticle can have a particle size of 50 to 300 nm ([0010]), which meets the claimed particle size.
Regarding claim 3, Yan teaches the nanoparticle can contain at least 20 wt. %, 25 wt. %, 30 wt. %, 35 wt. %, 40 wt. %, 45 wt. %, 50 wt. %, 55 wt. %, 60 wt. %, 65 wt. %, 70 wt. %, 75 wt. % or 80 wt. % of the well treatment additive ([0054]), which meets the claimed amount.
Regarding claim 4, Yan teaches that the well treatment additive can be bound to the nanoparticle chemically and/or be adhered to the nanoparticle via an ionic bond, a covalent bond, a hydrogen bond, a Van der Walls interaction ([0046]), or impregnanted within the nanoparticles ([0002]).
Regarding claim 7, Yan teaches that the carrier material comprises transition metal oxide ([0040]-[0041]).
Regarding claim 25, Yan teaches a well treatment composition comprises the nanopartilces ([0056]).
Claim Rejections - 35 USC § 103
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.
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.
Claims 3, 13, 14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao.
The teachings of Zhao are set forth above.
Regarding claim 3, Zhao teaches that the oil field chemical ican present at 2 to 98% by weight of the microcapsule ([0127]), which encompasses the claimed amount.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include oil field chemical , i.e., the asphaltene inhibitor at the instantly claimed range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claim 13, Zhao teaches that the microcapsule can have an average particle size of between 0.1 μm and 500 μm, inclusive ([0131]), which encompasses the claimed diameter of 250 nm to 350 nm, and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I. Consequently the shell thickness would be less than 250 nm or less than 350 nm, which encompasses the claimed thickness and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976).
Zhao further teaches the oil field chemicals are present at 5 to 100% by weight of total cores ([0127]), which encompasses the claimed amount and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976).
Regarding claim 14, Zhao teaches individual molecules of oil field chemicals can be present in the shells around the core ([0127] and [0129]). .
Regarding claim 21, Zhao does not discloses the claimed treatment capacity, however, Zhao teaches the same nanoparticles loaded with the same amount of treatment additive, absent evidence to the contrary, one of ordinary skill in the art would have reasonable basis to expect the claimed treatment capacity would naturally arise and be achieved by Zhao’s microcapsules. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao as applied to claims 1-4, 6-9, 12-14, 20, 21 and 25 above, and further in view of US2012/0015852A1(Quintero), which is listed in Applicant’s information disclosure statement.
The teachings of Zhao are set forth above.
While teaching permeable/porous matrix/shell ([0158]), Zhao does not discloses the claimed pore size.
Quintero teaches mesoporous nanoparticles including silica with pore size of 2 to 50 nm can be applied in well treatment fluid as nanocapsules that encapsulate treatment chemicals such as asphaltene inhibitors ([0023] and [0050]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to utilize nanosilica of a pore size of 2 to 50 nm of Quintero in the microcapsule of Zhao since it has been held that it is prima facie obviousness to use a known material based on its suitability for its intended use. See MPEP 2144.06(II) and 2144.07; In re Fout, 675 F2d 297, 213 USPQ 532 (CCPA 1982); Sinclair & Carroll Co v Interchemical Corp, 325 US 327, 65 USPQ 297 (1945); In re Leshin, 227 F2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc v Ag-Bag Corp, 857 F2d 1418, 8 USPQ2d 1323 (Fed Cir 1988). Additionally, a person of ordinary skill in the art would have been motivated to adjust the pore size in order to obtain a workable product.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao as applied to claims 1-4, 6-9, 12-14, 20, 21 and 25 above, in view of US2021/0130681A1(Yamani) and in further view of US 2007/0022877A1(Marand).
The teachings of Zhao are set forth above.
While teaching the outer surface of the microcapsules contains one or more chemical groups including an amine, a quaternized amine and a silanol [0134] and [0182]), Zhao does not teach the presence of aminopropyltriethoxysilane and cetyltrimethylammonium bromide (CTAB).
Yamani teaches CTAB can be used as a structure-directing agent to produce ordered mesoporous silica nanoparticles, which can be easily functionalized for various applications due to its uniform pore structure and size ([0055]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to include CTAB directed nanosilica of Yamani in the microcapsules of Zhao. The rationale to do so would have been the teachings of Yamani that to do so would provide easy functionalization on the silica ([0055]).
Neither Zhao nor Yamani discloses the surface modifying agent comprises aminopropyltriethoxysilane.
Marand teaches mesoporous silica can be functionalized with amine groups by treating the surface with amino group-containing silicon alkoxide such as 3-aminopropyltriethoxysilane ([0148]).
At the time the invention was made it would have been obvious for a person of ordinary skill in the art to utilize the 3-aminopropyltriethoxysilane of Marand to attach amine group to the surface of the microcapsule of Zhao and Yamani since it would have been obvious for one of ordinary skill in the art to apply a known technique to a known device (method, or product) to yield predictable results. In the instant case, a known technique to functionalize silica nanoparticles with an amine group, which is desirable by Zhao ([0134] and [0182]). See MPEP 2143 (D).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Yan.
The teachings of Yan are set forth above.
Yan does not discloses the claimed treatment capacity, however, Yan teaches the same nanoparticles loaded with the same amount of treatment additive, absent evidence to the contrary, one of ordinary skill in the art would have reasonable basis to expect the claimed treatment capacity would naturally arise and be achieved by Yan’s nanoparicles. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/Ph.D., Primary Examiner, Art Unit 1766
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