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 .
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 19/219,353 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims encompasses all of the limitations of the instant claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/627,734 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims encompasses all of the limitations of the instant claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-8, 13, and 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koczo (US 2007/0244205 A1).
Regarding claims 1 and 17, Koczo discloses a process comprising: adding an anti-foam compound to hydrocarbon gas (paragraph 75) in natural gas processing (paragraph 77). It is the Office’s position that such processing requires a conduit.
Regarding claim 2, Koczo incorporates a book "Oilfield Processing of Petroleum: Natural Gas” by reference (paragraph 77). Such processing includes the claimed materials.
Regarding claim 3, Koczo discloses methane, ethane, propane, and butane (paragraph 75).
Regarding claims 4 and 5, Koczo discloses that the anti-foam compound includes a component the encompasses the claimed formula (paragraphs 53-55).
Regarding claims 6, 15, and 16, Koczo discloses polydimethylsiloxane (paragraph 88).
Regarding claim 7, Koczo discloses water solvent (paragraph 80).
Regarding claim 8, Koczo discloses anionic surfactant (paragraph 89).
Regarding claim 13, Koczo discloses a stabilizer (paragraph 29).
Regarding claim 18, Koczo discloses a process comprising: adding an anti-foam compound to hydrocarbon gas (paragraph 75) in natural gas processing (paragraph 77). It is the Office’s position that such processing requires equipment.
Regarding claim 20, Koczo discloses polydimethylsiloxane (paragraph 88).
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Koczo as applied to claim 1 above, and further in view of Palazzotto (US 2008/0081773 A1).
Koczo does not disclose a slug catcher though does discuss natural gas processing in the context of oilfields. Palazzotto—in an invention for natural gas field processing—discloses the use of one or more slug catchers to separate liquid and gas phases in the process stream from coal bed to downstream machines (paragraphs 5-12). Palazzotto discloses demulsifiers with anti-foaming agents for the process stream (paragraph 45) to inhibit formation of emulsions, break emulsions that have developed, and inhibit corrosion (paragraph 46). It would have been obvious to one having ordinary skill in the art at the time of invention to utilize the composition of Koczo in the methane procurement and utilization system of Palazzotto to effective fill the need inhibit corrosion in the technology for which Koczo is applied.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Koczo as applied to claim 1 above, and further in view of Li (CN 111352298 B). A machine translation is provided herewith for translation and citation purposes.
Koczo discloses a stabilizer (paragraph 29) and that the low-foaming gas processing composition of the invention also includes a polypropylene glycol component (paragraph 58) functionalized as an alcohol ether (paragraph 60). Koczo has found that there is a synergistic effect in the present invention in the combination of polypropylene glycol and silicone antifoam component (paragraph 58). Li—in an invention pertaining to dispersants in alcohol ether—discloses claimed Formula II (see page 1) and that Li significantly increases the solubility and dispersion stability of quantum dots in alcohol ether solvents by using a compound having the formula 1 as a dispersant (section Formula 1). It would have been obvious to one having ordinary skill in the art at the time of invention to utilize the compound of claim 14 with the anti-foam compound of Koczo to improve solubility and dispersion stability as suggested by Li.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
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, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IMRAN AKRAM/Primary Examiner, Art Unit 1725
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