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 .
Information Disclosure Statement
The duplicate copy of the information disclosure statement filed 07/30/25 has not been considered as the references listed thereon were previously considered with the initial copy of the information disclosure statement filed 07/30/25 that was reviewed and is included with this office action. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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 1-4, along with new claims 21, 22 and 25, dependent therefrom, 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. Claim 1 recites the limitation "the P-tagged asphaltene inhibitor with an adsorbent is a composite" in (a). There is insufficient antecedent basis for this limitation in the claim as Applicant has not previously recited “a P-tagged asphaltene inhibitor with an adsorbent.” It is unclear if Applicant is intending to require the P-tagged asphaltene inhibitor as associated with an adsorbent substrate by use of the phrase “with an adsorbent.” Clarification is required.
For examination purposes, the recitations in (a) beginning with “wherein the P-tagged asphaltene inhibitor with an adsorbent substrate” will be considered as -wherein the P-tagged asphaltene inhibitor an
Claim 5, along with claims 6, 7, 9, 11, 12, 15, 23 and 24, dependent therefrom, 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. In (b), the last line thereof, Applicant recites “the weight ratio of tagged asphaltene inhibitor to adsorbent in the composite is from about 9:1 to about 1;” it appears a number is missing as “1;” does not provide for a weight ratio. Clarification is required in order to clearly define the weight ratio range Applicant intends to claim.
Claim 11 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 11 recites the limitation "the taggant" in line 1. There is insufficient antecedent basis for this limitation in the claim. Although claim 5, upon which claim 11 depends, recites “a tagged asphaltene inhibitor,” Applicant has not positively identified ‘a taggant’ as present therein, and, as such, there is insufficient antecedent basis for “the taggant” as claimed in claim 11.
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 amount of taggant" in line 1. There is insufficient antecedent basis for this limitation in the claim. Although claim 5, upon which claim 15 depends, recites “a tagged asphaltene inhibitor,” Applicant has not positively identified ‘a taggant’ as present therein and/or “an amount” thereof, and, as such, there is insufficient antecedent basis for “the amount of taggant” as claimed in claim 15.
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.
Claims 1-7, 9, 11, 12, 15 and 17-25 are rejected under 35 U.S.C. 103 as being unpatentable over MacEwan (US 2014/0100142 – cited previously) in view of Qu et al. (US 2016/0168952 – cited previously) and Bhaduri et al. (US 2021/0340432).
With respect to independent claim 1, MacEwan discloses a method of monitoring the level of scale inhibitor needed to inhibit or prevent deposition of scale in a producing well, the method comprising:
(a) determining a minimum inhibitory concentration (MIC) of P-tagged inhibitor required to inhibit deposition of scale in a sample of fluid recovered from the producing well ([0038]; [0074]-[0078], wherein a MIC is determined for an exemplary tracer), the P-tagged inhibitor comprising an inhibitor covalently bonded to a phosphorus containing taggant ([0020]; [0025]-[0031]; [0033]);
(b) introducing into the producing well a pre-determined quantitative amount in excess of the MIC of the P-tagged inhibitor ([0033]; [0039]-[0040], wherein additional inhibitor is added when the amount thereof approaches the MIC, thereby implying such is indeed initially provided in excess thereof; [0043], wherein the desired concentration is provided; [0045], wherein an amount of inhibitor is injected)
(c) determining the concentration of the P-tagged inhibitor in an aliquot of fluid removed from the producing well ([0043]; [0045]);
(d) comparing the concentration of the P-tagged inhibitor in the aliquot to the MIC ([0038]-[0040]; [0045]); and
(e) introducing additional P-tagged inhibitor into the producing well once the concentration of P-tagged inhibitor in the aliquot is approaching the MIC ([0039]-[0040]).
MacEwan discloses providing additional inhibitor when the measured amount thereof approaches the MIC ([0039]-[0040]) so as to ensure the amount of inhibitor present is that which is effective for preventing scale ([0009]). Since MacEwan suggests wherein additional inhibitor is added when the measured amount thereof approaches the MIC, i.e., the 100% value thereof, the concentration of the inhibitor in the aliquot would appear to be suggested as greater than the 100% value, i.e., before the concentration drops below an amount at which it is no longer effective for use as an inhibitor. For example, should the MIC be 100 ppm, MacEwan appears to suggest addition of inhibitor when the MIC approaches such, i.e., decreases to a value greater than 100 ppm, such as 120 ppm, but less than an originally provided amount, for example 200 ppm, and it would therefore appear MacEwan suggests addition of inhibitor when the amount thereof in the aliquot is indeed less than 175% of the MIC as claimed. As such, it would have been obvious to one having ordinary skill in the art to introduce additional inhibitor into the producing well once the aliquot approaches the MIC in order to ensure the inhibitor is maintained and present in the fluids in an amount effective to continuously inhibit precipitation. With regard to the specificity of less than 175% of the MIC as claimed, one having ordinary skill in the art would recognize an amount of inhibitor in the aliquot that is approaching the MIC at which it is necessary to add additional inhibitor to the producing well in the method of MacEwan in order to ensure the inhibitor maintains its presence above the MIC as it approaches the value thereof since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed percent in relation to the MIC as critical and it is unclear if any unexpected results are achieved by adding additional inhibitor to the producing well when the concentration thereof is less than or equal to 175% of the MIC. Since the inhibitor of MacEwan is added when the inhibitor concentration approaches the MIC so as to ensure an effective amount of inhibitor is maintained in the well continuously, it does not appear that such would be considered an unexpected result of adding inhibitor at a time when the inhibitor in the aliquot is less than or equal to 175% of the MIC, and, as such, the optimal amount of inhibitor in the aliquot for timing the addition of more inhibitor would be achievable through routine experimentation in the art in order to ensure the amount thereof remains effective for inhibiting precipitation within the well.
MacEwan discloses the above method as used with respect to a tagged scale inhibitor; the reference, however, fails to specify such as conducted with an asphaltene inhibitor. Qu et al. teaches a method of monitoring the level of asphaltene inhibitor needed to inhibit of prevent deposition of asphaltene in a producing well wherein an effective concentration of a P-tagged asphaltene inhibitor required to inhibit deposition of asphaltenes in a sample of fluid recovered from the producing well is determined ([0016]; [0023]-[0025]) and introduced into a producing well ([0016]; [0019]-[0020]; [0025]); the concentration of the P-tagged asphaltene inhibitor in an aliquot of fluid removed from the producing well is determined and compared to the determined effective amount so that more of the inhibitor can be added to the well if necessary to maintain the inhibitor presence above the effective amount ([0023]). The P-tagged asphaltene inhibitor comprises an asphaltene inhibitor covalently bonded to a phosphorous containing taggant ([0013]-[0014]);
Since Qu et al. teaches a similar method to that disclosed by MacEwan, wherein such is conducted with an asphaltene inhibitor for the purpose of ensuring an effective amount thereof is maintained to inhibit or prevent asphaltene deposition, it would have been obvious to one having ordinary skill in the art to try an asphaltene inhibitor as the inhibitor in the method of MacEwan in order to ensure the presence thereof is maintained above the minimum inhibitory concentration so as to inhibit or prevent the deposition of asphaltene in a producing well therewith.
MacEwan discloses wherein the tagged inhibitor, i.e., asphaltene inhibitor, in view of Qu et al., introduced into the producing well in step (b) comprises a tagged inhibitor which may be provided by soluble matrix techniques ([0041]). The reference, however, is silent to explicitly providing for wherein the inhibitor is a composite and wherein such is adsorbed onto an adsorbent substrate as claimed.
Bhaduri et al. teaches composites for controlling the release of a treatment agent used for inhibiting or preventing the formation of contaminants into a fluid or a surface within a reservoir (abstract), wherein such contaminants may include scale and asphaltenes ([0038]-[0042]). Such a composite includes the inhibitor adsorbed onto an adsorbent substrate ([0009]-[0010]) and it allows for release of the treatment agent, i.e., inhibitor, over a sustained period of time, thereby improving methods for delivering such treatment agents as compared to previous methods used for application thereof ([0005]-[0006]).
Since MacEwan suggests wherein the inhibitors may be applied by techniques including encapsulation or soluble matrix techniques and Bhaduri et al. teaches wherein well treatment agents such as inhibitors may be released from a composite for the purpose of providing release thereof over a sustained period of time, it would have been obvious to one having ordinary skill in the art to try a composite wherein the inhibitor of MacEwan, i.e., P-tagged asphaltene inhibitor in view of Qu et al., is adsorbed onto an adsorbent substrate, in order to yield the predictable result of allowing for the sustained release thereof over a period of time and thereby provide an improvement in the delivery thereof to the well/formation.
With respect to dependent claims 2 and 3, MacEwan discloses repeating steps (c)-(e), and, further, wherein such are successively repeated during the life of the producing well ([0045]-[0046], wherein the samples of fluids are taken periodically and then an additional amount of inhibitor is added at the amount needed to maintain the concentration above the MIC level).
With respect to dependent claim 4, as noted above in the rejection of claim 1, MacEwan discloses providing additional inhibitor when the measured amount thereof approaches the MIC ([0039]-[0040]) so as to ensure the amount of inhibitor present is that which is effective for preventing scale ([0009]). Since MacEwan suggests wherein additional inhibitor is added when the measured amount thereof approaches the MIC, i.e., the 100% value thereof, the concentration of the inhibitor in the aliquot would appear to be suggested as greater than the 100% value, i.e., before the concentration drops below an amount at which it is no longer effective for use as an inhibitor. For example, should the MIC be 100 ppm, MacEwan appears to suggest addition of inhibitor when the MIC approaches such, i.e., decreases to a value greater than 100 ppm, such as 120 ppm, but less than an originally provided amount, for example 200 ppm, and it would therefore appear MacEwan suggests addition of inhibitor when the amount thereof in the aliquot is indeed less than 150% of the MIC as claimed. As such, it would have been obvious to one having ordinary skill in the art to introduce additional inhibitor/composite, in view of Qu et al. and Bhaduri et al., into the producing well once the aliquot approaches the MIC in order to ensure the inhibitor is maintained and present in the fluids in an amount effective to continuously inhibit precipitation. With regard to the specificity of less than 150% of the MIC as claimed, one having ordinary skill in the art would recognize an amount of inhibitor in the aliquot that is approaching the MIC at which it is necessary to add additional inhibitor to the producing well in the method of MacEwan in order to ensure the inhibitor maintains its presence above the MIC as it approaches the value thereof since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed percent in relation to the MIC as critical and it is unclear if any unexpected results are achieved by adding additional inhibitor to the producing well when the concentration thereof is less than or equal to 150% of the MIC. Since the inhibitor of MacEwan is added when the inhibitor concentration approaches the MIC so as to ensure an effective amount of inhibitor is maintained in the well continuously, it does not appear that such would be considered an unexpected result of adding inhibitor at a time when the inhibitor in the aliquot is less than or equal to 150% of the MIC, and, as such, the optimal amount of inhibitor in the aliquot for timing the addition of more inhibitor would be achievable through routine experimentation in the art in order to ensure the amount thereof remains effective for inhibiting precipitation within the well.
With respect to independent claim 5, MacEwan discloses a method of maintaining a requisite amount of scale inhibitor in a producing well during production of hydrocarbons from the well, the method comprising:
(a) determining a minimum inhibitory concentration (MIC) of tagged inhibitor required to inhibit deposition of scale in a sample of fluid recovered from the producing well ([0038]; [0074]-[0078], wherein a MIC is determined for an exemplary tracer);
(b) introducing into the producing well the tagged inhibitor in a sufficient amount to inhibit deposition of scale in the producing well ([0033]; [0039]-[0040]; [0043], wherein the desired concentration is provided; [0045], wherein an amount of inhibitor is injected), the tagged inhibitor comprising the inhibitor and a taggant attached thereto ([0021]-[0031]);
(c) determining the concentration of the tagged inhibitor in an aliquot of fluid removed from the producing well ([0043]; [0045]);
(d) comparing the concentration of tagged inhibitor in the aliquot to the MIC ([0038]-[0040]; [0045]); and
(e) introducing additional tagged inhibitor into the producing well once the concentration of the inhibitor in the aliquot approaches the MIC ([0039]-[0040]).
MacEwan discloses the above method as used with respect to a tagged scale inhibitor; the reference, however, fails to specify such as conducted with an asphaltene inhibitor. Qu et al. teaches a method of monitoring the level of asphaltene inhibitor needed to inhibit of prevent deposition of asphaltene in a producing well wherein an effective concentration of a tagged asphaltene inhibitor required to inhibit deposition of asphaltenes in a sample of fluid recovered from the producing well is determined ([0016]; [0023]-[0025]) and introduced into a producing well ([0016]; [0019]-[0020]; [0025]); the concentration of the tagged asphaltene inhibitor in an aliquot of fluid removed from the producing well is determined and compared to the determined effective amount so that more of the inhibitor can be added to the well if necessary to maintain the inhibitor presence above the effective amount ([0023]). The tagged asphaltene inhibitor comprises an asphaltene inhibitor covalently bonded to a phosphorous containing taggant ([0013]-[0014]);
Since Qu et al. teaches a similar method to that disclosed by MacEwan, wherein such is conducted with an asphaltene inhibitor for the purpose of ensuring an effective amount thereof is maintained to inhibit or prevent asphaltene deposition, it would have been obvious to one having ordinary skill in the art to try an asphaltene inhibitor as the inhibitor in the method of MacEwan in order to ensure the presence thereof is maintained above the minimum inhibitory concentration so as to inhibit or prevent the deposition of asphaltene in a producing well therewith.
MacEwan discloses wherein the tagged inhibitor, i.e., asphaltene inhibitor, in view of Qu et al., introduced into the producing well in step (b) comprises a tagged inhibitor which may be provided by soluble matrix techniques ([0041]). The reference, however, is silent to explicitly providing for wherein the inhibitor is a composite and wherein such is adsorbed onto an adsorbent substrate as claimed.
Bhaduri et al. teaches composites for controlling the release of a treatment agent used for inhibiting or preventing the formation of contaminants into a fluid or a surface within a reservoir (abstract), wherein such contaminants may include scale and asphaltenes ([0038]-[0042]). Such a composite includes the inhibitor adsorbed onto an adsorbent substrate ([0009]-[0010]) and it allows for release of the treatment agent, i.e., inhibitor, over a sustained period of time, thereby improving methods for delivering such treatment agents as compared to previous methods used for application thereof ([0005]-[0006]). The adsorbent has a surface area of 110-700 m2/g ([0008]) and such enables the composite to be used over prolonged periods of time compared to composites previously used as the well treatment agent can slowly dissolve at a generally constate rate over an extended period of time therefrom ([0033]). Such adsorbents can hold about 0.05-25 weight percent of well treatment agent based upon the total weight of the composite and weight ratios of well treatment agent to adsorbent are in the range of 9:1 to 1:9, which provides an amount sufficient to effectuate the desired result over a sustained period of time ([0032]).
Since MacEwan suggests wherein the inhibitors may be applied by techniques including encapsulation or soluble matrix techniques and Bhaduri et al. teaches wherein well treatment agents such as inhibitors may be released from a composite for the purpose of providing release thereof over a sustained period of time, it would have been obvious to one having ordinary skill in the art to try a composite wherein the inhibitor of MacEwan, i.e., P-tagged asphaltene inhibitor in view of Qu et al., is adsorbed onto an adsorbent substrate as taught by Bhaduri et al., in order to yield the predictable result of allowing for the sustained release thereof over a period of time and thereby provide an improvement in the delivery thereof to the well/formation.
With respect to dependent claims 6 and 7, MacEwan discloses providing additional inhibitor, i.e., composite in view of Bhaduri et al., when the measured amount thereof approaches the MIC ([0039]-[0040]) so as to ensure the amount of inhibitor present is that which is effective for preventing scale ([0009]). Since MacEwan suggests wherein additional inhibitor is added when the measured amount thereof approaches the MIC, i.e., the 100% value thereof, the concentration of the inhibitor in the aliquot would appear to be suggested as greater than the 100% value, i.e., before the concentration drops below an amount at which it is no longer effective for use as an inhibitor. For example, should the MIC be 100 ppm, MacEwan appears to suggest addition of inhibitor when the MIC approaches such, i.e., decreases to a value greater than 100 ppm, such as 120 ppm, but less than an originally provided amount, for example 200 ppm, and it would therefore appear MacEwan suggests addition of inhibitor when the amount thereof in the aliquot is indeed less than 150% of the MIC/plus or minus 20 percent of the MIC, as claimed. As such, it would have been obvious to one having ordinary skill in the art to introduce additional inhibitor into the producing well once the aliquot approaches the MIC in order to ensure the inhibitor is maintained and present in the fluids in an amount effective to continuously inhibit precipitation. With regard to the specificity of less than 150% and/or plus or minus 20% of the MIC as claimed, one having ordinary skill in the art would recognize an amount of inhibitor in the aliquot that is approaching the MIC at which it is necessary to add additional inhibitor to the producing well in the method of MacEwan in order to ensure the inhibitor maintains its presence above the MIC as it approaches the value thereof since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed percent in relation to the MIC as critical and it is unclear if any unexpected results are achieved by adding additional inhibitor to the producing well when the concentration thereof is less than or equal to 150% of the MIC and/or plus or minus 20 percent of the MIC. Since the inhibitor of MacEwan is added when the inhibitor concentration approaches the MIC so as to ensure an effective amount of inhibitor is maintained in the well continuously, it does not appear that such would be considered an unexpected result of adding inhibitor at a time when the inhibitor in the aliquot is less than or equal to 150% of the MIC, and/or plus or minus 20 percent of the MIC, and, as such, the optimal amount of inhibitor in the aliquot for timing the addition of more inhibitor would be achievable through routine experimentation in the art in order to ensure the amount thereof remains effective for inhibiting precipitation within the well.
With respect to dependent claim 9, MacEwan discloses repeating steps (c)-(e) ([0045]-[0046], wherein the samples of fluids are taken periodically and then an additional amount of inhibitor is added at the amount needed to maintain the concentration above the MIC level).
With respect to dependent claim 11, MacEwan discloses the taggant as claimed ([0042]); Qu et al. further provides for a taggant as claimed ([0013]; [0027]).
With respect to dependent claim 12, Bhaduri et al. further suggests wherein a coating layer envelops the composite for the purpose of further controlling the release of the well treatment agent; coatings include organic polymers or inorganic material ([0072]-[0075]). As such, it would have been obvious to one having ordinary skill in the art to coat the composite of MacEwan in view of Qu et al. and Bhaduri et al. in order to further control the release of the well treatment agent. The Examiner notes, MacEwan discloses wherein the traceable inhibitors may be applied by techniques including encapsulation ([0041]), thereby suggesting the desire to provide a controlled release thereof, and, thereby one of ordinary skill in the art would recognize the applicability of the coated composite of Bhaduri et al. thereto.
With respect to dependent claim 15, MacEwan discloses wherein the amount of taggant in the tagged inhibitor is within the range as claimed ([0033]). The Examiner notes, Qu et al. further provides for a taggant in the asphaltene inhibitor set forth above, wherein the detectable element is present as the taggant therein ([0013]), wherein the ratio of various reagents used to produce such would be recognizable to one of ordinary skill ([0015]-[0016]). Although silent to the presence of taggant in the inhibitor, given the disclosed amount of taggant in the method of MacEwan and Qu et al.’s indication wherein one of ordinary skill would how to produce the desired tagged compounds, one having ordinary skill in the art would recognize the optimal amount of taggant to provide in the method of MacEwan in view of Qu et al. in order to provide a tagged compounds detectable by the method provided for therewith since it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to independent claim 17, MacEwan discloses a method of minimizing deposition in a producing well, the method comprising:
(a) determining a minimum inhibitory concentration (MIC) of a tagged inhibitor required to inhibit deposition of scale in a sample of fluid recovered from the producing well ([0038]; [0074]-[0078], wherein a MIC is determined for an exemplary tracer), the tagged inhibitor comprising a taggant coupled to an inhibitor ([0020]; [0025]-[0031]; [0033]);
(b) introducing into the producing well a quantity of tagged inhibitor, the inhibitor being capable or inhibiting the deposition of deposits in the producing well ([0033]; [0039]-[0040]; [0043], wherein the desired concentration is provided; [0045], wherein an amount of inhibitor is injected);
(c) monitoring an amount of tagged inhibitor released in crude oil from a producing well by determining the concentration of the tagged inhibitor in an aliquot of fluid removed from the producing well ([0043]; [0045]) and comparing the concentration of the tagged inhibitor in the aliquot to the MIC ([0038]-[0040]; [0045]); and
(d) minimizing scale deposition in the producing well by introducing additional tagged inhibitor into the producing well once the concentration of tagged inhibitor in the aliquot is approaching the MIC ([0039]-[0040]).
MacEwan discloses providing additional inhibitor when the measured amount thereof approaches the MIC ([0039]-[0040]) so as to ensure the amount of inhibitor present is that which is effective for preventing scale ([0009]). Since MacEwan suggests wherein additional inhibitor is added when the measured amount thereof approaches the MIC, i.e., the 100% value thereof, the concentration of the inhibitor in the aliquot would appear to be suggested as greater than the 100% value, i.e., before the concentration drops below an amount at which it is no longer effective for use as an inhibitor. For example, should the MIC be 100 ppm, MacEwan appears to suggest addition of inhibitor when the MIC approaches such, i.e., decreases to a value greater than 100 ppm, such as 120 ppm, but less than an originally provided amount, for example 200 ppm, and it would therefore appear MacEwan suggests addition of inhibitor when the amount thereof in the aliquot is indeed less than 175% of the MIC as claimed. As such, it would have been obvious to one having ordinary skill in the art to introduce additional inhibitor into the producing well once the aliquot approaches the MIC in order to ensure the inhibitor is maintained and present in the fluids in an amount effective to continuously inhibit precipitation. With regard to the specificity of less than 175% of the MIC as claimed, one having ordinary skill in the art would recognize an amount of inhibitor in the aliquot that is approaching the MIC at which it is necessary to add additional inhibitor to the producing well in the method of MacEwan in order to ensure the inhibitor maintains its presence above the MIC as it approaches the value thereof since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed percent in relation to the MIC as critical and it is unclear if any unexpected results are achieved by adding additional inhibitor to the producing well when the concentration thereof is less than or equal to 175% of the MIC. Since the inhibitor of MacEwan is added when the inhibitor concentration approaches the MIC so as to ensure an effective amount of inhibitor is maintained in the well continuously, it does not appear that such would be considered an unexpected result of adding inhibitor at a time when the inhibitor in the aliquot is less than or equal to 175% of the MIC, and, as such, the optimal amount of inhibitor in the aliquot for timing the addition of more inhibitor would be achievable through routine experimentation in the art in order to ensure the amount thereof remains effective for inhibiting precipitation within the well.
MacEwan discloses the above method as used with respect to a tagged scale inhibitor; the reference, however, fails to specify such as conducted with an asphaltene inhibitor, and, thus, the inhibition of asphaltenes in a sample of crude oil. Qu et al. teaches a method of monitoring the level of asphaltene inhibitor needed to inhibit of prevent deposition of asphaltene in a producing well wherein an effective concentration of a P-tagged asphaltene inhibitor required to inhibit deposition of asphaltenes in a sample of crude oil recovered from the producing well is determined ([0016]; [0023]-[0025]) and introduced into a producing well ([0016]; [0019]-[0020]; [0025]); the concentration of the P-tagged asphaltene inhibitor in an aliquot of crude oil removed from the producing well is determined and compared to the determined effective amount so that more of the inhibitor can be added to the well if necessary to maintain the inhibitor presence above the effective amount ([0023]). The P-tagged asphaltene inhibitor comprises an asphaltene inhibitor covalently bonded to a phosphorous containing taggant ([0013]-[0014]);
Since Qu et al. teaches a similar method to that disclosed by MacEwan, wherein such is conducted with an asphaltene inhibitor for the purpose of ensuring an effective amount thereof is maintained to inhibit or prevent asphaltene deposition, it would have been obvious to one having ordinary skill in the art to try an asphaltene inhibitor as the inhibitor in the method of MacEwan and thereby inhibit the deposition of asphaltenes in a sample of crude oil therewith, in order to ensure the presence thereof is maintained above the minimum inhibitory concentration so as to inhibit or prevent the deposition of asphaltene in crude oil produced from a producing well.
MacEwan discloses wherein the tagged inhibitor, i.e., asphaltene inhibitor, in view of Qu et al., introduced into the producing well in step (b) comprises a tagged inhibitor which may be provided by soluble matrix techniques ([0041]). The reference, however, is silent to explicitly providing for wherein the inhibitor is a composite and wherein such is adsorbed onto an adsorbent substrate as claimed.
Bhaduri et al. teaches composites for controlling the release of a treatment agent used for inhibiting or preventing the formation of contaminants into a fluid or a surface within a reservoir (abstract), wherein such contaminants may include scale and asphaltenes ([0038]-[0042]). Such a composite includes the inhibitor adsorbed onto an adsorbent substrate ([0009]-[0010]) such as diatomaceous earth ([0036]) and it allows for release of the treatment agent, i.e., inhibitor, over a sustained period of time, thereby improving methods for delivering such treatment agents as compared to previous methods used for application thereof ([0005]-[0006]).
Since MacEwan suggests wherein the inhibitors may be applied by techniques including encapsulation or soluble matrix techniques and Bhaduri et al. teaches wherein well treatment agents such as inhibitors may be released from a composite with an adsorbent substrate for the purpose of providing release thereof over a sustained period of time, it would have been obvious to one having ordinary skill in the art to try a composite of the inhibitor of MacEwan i.e., P-tagged asphaltene inhibitor in view of Qu et al., adsorbed onto an adsorbent substrate as claimed and taught by Bahduri et al., in order to yield the predictable result of allowing for the sustained release thereof over a period of time and thereby provide an improvement in the delivery thereof to the well/formation.
With respect to dependent claim 18, as noted above in the rejection of claim 17, MacEwan discloses providing additional inhibitor when the measured amount thereof approaches the MIC ([0039]-[0040]) so as to ensure the amount of inhibitor present is that which is effective for preventing scale ([0009]). Since MacEwan suggests wherein additional inhibitor is added when the measured amount thereof approaches the MIC, i.e., the 100% value thereof, the concentration of the inhibitor in the aliquot would appear to be suggested as greater than the 100% value, i.e., before the concentration drops below an amount at which it is no longer effective for use as an inhibitor. For example, should the MIC be 100 ppm, MacEwan appears to suggest addition of inhibitor when the MIC approaches such, i.e., decreases to a value greater than 100 ppm, such as 120 ppm, but less than an originally provided amount, for example 200 ppm, and it would therefore appear MacEwan suggests addition of inhibitor when the amount thereof in the aliquot is indeed less than 125% of the MIC as claimed. As such, it would have been obvious to one having ordinary skill in the art to introduce additional inhibitor into the producing well once the aliquot approaches the MIC in order to ensure the inhibitor is maintained and present in the fluids in an amount effective to continuously inhibit precipitation. With regard to the specificity of less than 125% of the MIC as claimed, one having ordinary skill in the art would recognize an amount of inhibitor in the aliquot that is approaching the MIC at which it is necessary to add additional inhibitor to the producing well in the method of MacEwan in order to ensure the inhibitor maintains its presence above the MIC as it approaches the value thereof since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed percent in relation to the MIC as critical and it is unclear if any unexpected results are achieved by adding additional inhibitor to the producing well when the concentration thereof is less than or equal to 125% of the MIC. Since the inhibitor of MacEwan is added when the inhibitor concentration approaches the MIC so as to ensure an effective amount of inhibitor is maintained in the well continuously, it does not appear that such would be considered an unexpected result of adding inhibitor at a time when the inhibitor in the aliquot is less than or equal to 125% of the MIC, and, as such, the optimal amount of inhibitor in the aliquot for timing the addition of more inhibitor would be achievable through routine experimentation in the art in order to ensure the amount thereof remains effective for inhibiting precipitation within the well.
With respect to dependent claim 19, MacEwan discloses wherein steps (c) and (d) are successively repeated during the life of the producing well ([0045]-[0046], wherein the samples of fluids are taken periodically and then an additional amount of inhibitor is added at the amount needed to maintain the concentration above the MIC level).
With respect to dependent claim 20, MacEwan discloses the taggant as claimed ([0042]); Qu et al. further provides for a taggant as claimed ([0013]; [0027]).
With respect to new dependent claims 21-24, Bahduri et al. teaches the adsorbent substrate as claimed ([0036], see motivation to combine in the rejection of claim 1 as set forth above).
With respect to new dependent claim 25, MacEwan discloses wherein the tagged inhibitor is introduced into the producing well during cleaning operations ([0005]). The reference, however, fails to disclose such as introduced during a treatment operation as claimed. Qu et al. teaches application of tagged inhibitors, as set forth above in the rejection of claim 1, and, further, suggests wherein such can be applied during clean-out operations, but, alternatively, can be used with hydraulic fracturing treatments, sand control treatments and frac-pack treatments ([0018]). It would have been obvious to one having ordinary skill in the art to try the method of MacEwan in view of Qu et al. in conjunction with an alternative operation to cleaning, such as hydraulic fracturing, sand control or frac-pack treatments, and thereby introduce the tagged asphaltene inhibitor into the producing well during such an operation in order to yield the predictable result of controlling asphaltene precipitation during such.
Response to Arguments
Applicant’s arguments and amendments made with respect to the claim objections and 35 USC 112, second paragraph, rejections, as set forth in the previous office action, have been fully considered and are persuasive. The claim objections and 35 USC 112, second paragraph, rejections, as set forth therein, have been withdrawn. The Examiner notes, however, new grounds of rejection have been presented under 35 USC 112, second paragraph, as based on Applicant’s amendments filed 10/10/25.
Applicant’s arguments with respect to the rejections of “claims 1-2 and 15-20” under 35 USC 103 have been fully considered; the Examiner notes, the rejection as previously set forth applied to claims 1-12 and 15-20. Applicant notes the amendments to the claims render the discussion of the rejection unnecessary. The Examiner notes, a new grounds of rejection has been added to the previous rejection to reflect the unpatentability of the newly claimed subject matter. Since Applicant has not presented any further arguments pertaining to the teachings of MacEwan or Qu, the rejections made with respect to the teachings th