DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6, 8-16, 31-35 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Publication No. 20100160449 based an application by Rovison et al. (Rovison) or U.S. Patent No. 6,627,657 to Hilgren et al. (Hilgren); or U.S. Publication No. 20070274857 (US 857) in view of:
WO 91/07375 (WO 375); and
U.S. Patent No. 5,349,083 to Brougham et al. (Brougham); and
Ventura, Long Term Storability of Hydrogen Peroxide, 41st AIA A/ASME/SAE/ASEE Joint Propulsion Conference & Exhibit AIA A-2005-4551,Tucson, AZ, July 10-13, 2005 (Ventura).
Rovison teaches aqueous well treatment fluids comprising peracids, and peracetic acid in particular, that are highly suitable for use as biocide formulations used in oil- and gas-field well operations. These formulations comprise polymer or copolymer additives that function to modify the viscosity characteristics of the aqueous well fluid, whether to reduce fluid viscosity.
Rovison teaches that commercial formulations of aqueous peracetic acid, not only contain peracetic acid but also hydrogen peroxide, the latter normally in excess of the peracetic acid concentration, and acetic acid in a dynamic chemical equilibrium, as shown in reaction (2) below.
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Commercial formulations of peracetic acid that contain an excess of peracetic acid, as compared to the hydrogen peroxide also present, are relatively uncommon, and known products have been available only in the last ten years, e.g., Peracetic Acid 15% (15/10) and Peracetic Acid 35% (FMC Corporation, Philadelphia, Pa.), see paragraphs 0025+.
Aqueous peracetic acid solutions are susceptible to decomposition, particularly at elevated temperatures, at alkaline pH values and in the presence of impurities, e.g., transition metal ions. The stability of aqueous peracetic acid solutions and other peracid solutions is typically improved by the addition of known hydrogen peroxide or peracid stabilizers. Stabilizers used for stabilization of peracid solutions include pyrophosphoric acid or a pyrophosphate (U.S. Pat. No. 2,347,434 of Reichert et al.), phosphates (U.S. Pat. No. 2,590,856 of Greenspan et al.), phosphonates (GB 925 373 of Henkel GmbH), dipicolinic acid (U.S. Pat. No. 2,609,391 of Greenspan et al.), and tin compounds that are preferably stannates (EP-B1-0 563 584 of Degussa AG).
Commonly available commercial formulations of peracetic acid typically exhibit a pH of about 1-3 when diluted to a 1 wt % solution. However, no pH adjustment is normally required when such peracetic acid formulations are employed in the preparation of the biocidal aqueous well treatment fluids of this invention, see paragraph 0044+.
Commercially available aqueous peracetic acid and other peracid formulations typically contain or more stabilizers such as those described above, so no additional stabilization is required for their use in the preparation of the dilute peracid- or peracetic acid-containing biocidal aqueous well treatment fluids of this invention, see paragraphs 0041.
The reference teaches that the aqueous peracetic acid biocide of the present invention is intended for use with aqueous treatment fluids that are conventionally used in subterranean oil- and gas-field well operations, such as well drilling, formation fracturing, productivity enhancement, secondary recovery and the like. The aqueous well treatment fluids employed in the present invention are characterized by containing one or more viscosity-modifying polymers
In one embodiment of the invention, the viscosity-modifying polymer may function or serve to reduce the fluid viscosity and reduce the flowing friction or reduce flow turbulence, to improve flow characteristics of the aqueous well treatment fluid. Viscosity-reducing polymeric agents are employed in amounts that provide friction-reducing functionality in the aqueous fluid.
Viscosity-reducing polymers are typically used in amounts of about 0.01 to about 1 wt %, more preferably about 0.05 to about 0.5 wt %, based on the weight of the aqueous fluid. A friction-reduced well fluid typically contains an amount of viscosity-reducing polymer sufficient to provide a fluid viscosity of about 10 centipoise (cp) or less, preferably less than about 5 cp (pure water has a viscosity of about 1 cp).
Viscosity-increasing polymers or copolymers are used to promote formation of a viscous or semi-gelled or gelled state, usually reversible, in aqueous well treatment fluids. End use applications for such viscosity-enhancing well fluids include inhibition or control flow of water or formation gas and/or oil products flow into the well bore, as well as facilitating uniform dispersal or suspension of various solids used during well operations.
Viscosity-increasing polymers or copolymers are used to promote formation of a viscous or semi-gelled or gelled state, usually reversible, in aqueous well treatment fluids. End use applications for such viscosity-enhancing well fluids include inhibition or control flow of water or formation gas and/or oil products flow into the well bore, as well as facilitating uniform dispersal or suspension of various solids used during well operations.
Use of such solids requires that the aqueous well fluid provide sufficient suspension of the solids to ensure that the solids are properly delivered to the site of the well bore or formation where their functionality is needed. Well fracturing procedures using proppants, e.g., inorganic solids like sand, silica, quartz, diatomaceous earth, in coated or uncoated form, require that these solids be suspended in the fluid, delivered and uniformly dispersed throughout the formation fractures by the well fluid during fracturing operations, so a viscous, thickened or partially gelled well fluid is usually employed. In addition, such well fluids often carry other solids, e.g., so-called viscosity breakers, that are employed in well fracturing or other procedures used in gas- and oil-field operations.
Examples of viscosity-enhancing polymers that can serve to increase the fluid viscosity include synthetic polymers such as acrylamide-derived polymers and copolymers and acrylate-derived polymers and copolymers, often in crosslinked form.
Acrylamide-derived polymers and copolymers that can serve as viscosity-enhancing polymers include polyacrylamide, acrylamide-acrylate (acrylic acid) copolymers, acrylic acid-methacrylamide copolymers, partially hydrolyzed polyacrylamide copolymers (PHPA), partially hydrolyzed polymethacrylamides, acrylamide-methyl-propane sulfonate copolymers (AMPS) and the like.
Cross-linked acrylamide-based polymers that exhibit viscosity-enhancing functionality have been described in U.S. Pat. No. 4,995,461 of Sydansk (Marathon Oil) and in U.S. Pat. No. 5,268,112 of Hutchins et al. (Union Oil of California).
Examples of other viscosity-enhancing polymers (besides acrylamide-derived and acrylate-derived polymers and copolymers) that can serve to increase the fluid viscosity include natural and synthetic water-soluble polysaccharides, including guar and guar derivatives such as hydroxypropyl guar and carboxymethyl hydroxypropyl guar; xanthan and xanthan derivatives; alginates and alginate derivatives; carrageenan; cellulosic polymers and cellulosic derivatives such as hydroxyethylcellulose, hydroxypropylcellulose and carboxymethylhydroxyethylcellulose; and other biopolymers or synthetic polymers or copolymers that exhibit gelling or viscosity-enhancing functionality, and combinations of these. These polymers may either be linear (non-crosslinked) or crosslinked, e.g., using cross-linking agents such as borate or zirconate or titanate, see paragraphs 0071+.
Regarding limitations wherein hydrogen peroxide has a concentration of at least about 0.1 wt %, and the C1-C22 percarboxylic acid has a concentration of at least about 3 times of the concentration of said hydrogen peroxide, Hilgren demonstrates that these relative concentrations are well within the purview of those of ordinary skill (“A composition of the invention typically includes hydrogen peroxide, a carboxylic acid, and a peroxycarboxylic acid in which the ratio of peroxycarboxylic acid to hydrogen peroxide is at least 4:1, preferably at least 5:1, more preferably at least 6:1, and even more preferably at least 7:1. These ratios are expressed in parts by weight of peroxycarboxylic acid to each part by weight of hydrogen peroxide.”) see column 2, lines 49+. In this way, the prior art provides the motivation and methodology of providing composition with the required relative concentrations of percarboxylic acid and hydrogen peroxide.
WO 375 and Brougham, teach the peracetic acid compositions with the recited stabilizers, see, for example, Examples or WO 375 and Brougham which teach combinations of hydroxyethylidene diphosphonic acid and dipicolinic acid.
Accordingly, the elements of the claimed formulations are taught by the references, set forth below:
1) a C1-C22 carboxylic acid; 2) a C1-C22 percarboxylic acid; 3) hydrogen peroxide;
Taught by the references, see Hilgren at Table B, column 15:
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4) a first stabilizing agent, which is a picolinic acid or a compound having Formulas (IA) or (IB) and a second stabilizing agent of Formula (IIA).
Exemplified in Hilgren at column 12:
Examples of suitable stabilizing agents include polycarboxylic acids (e.g., dipicolinic acid, ethylenediaminetetraacetic acid, or citric acid), soluble salts of phosphates that may take the form of simple monomeric species or of condensed linear polyphosphates or cyclic metaphosphates, and the like.
Combinations of these compounds for the purpose of stabilizing against peracid decomposition, in the absence of some unexpected benefit, is prima facie obvious, See MPEP § 2144.06 (“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In reKerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)”.).
hydrogen peroxide has a concentration of at least about 0.1 wt.%, the C1-C22 percarboxylic acid has a concentration of at least about 3 times of the concentration of said hydrogen peroxide, and said composition has a pH at about 4 or less (claim 1); or
hydrogen peroxide has a concentration of about 1 ppm to about 20 ppm, and the C1-C22 percarboxylic acid has a concentration of at least about 3 times of the concentration of said hydrogen peroxide (claim 17); or
hydrogen peroxide has a concentration of about 1 ppm to about 15 ppm, and said C1-C22 percarboxylic acid has a concentration of at least about 3 times of the concentration of said hydrogen peroxide (claim 23).
See Rovison at paragraph 0044+: “[c]ommonly available commercial formulations of peracetic acid typically exhibit a pH of about 1-3 when diluted to a 1 wt % solution. However, no pH adjustment is normally required when such peracetic acid formulations are employed in the preparation of the biocidal aqueous well treatment fluids of this invention.”
Regarding weight percentages of hydrogen peroxide and weight ratios of C1-C22 percarboxylic acid and hydrogen peroxide; see Table 30 of Hilgren, see Solution B at column 32:
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Regarding stability requirements:
These functional limitations are deemed to be necessarily possessed by the compositions taught above by Rovision and Hilgren since the compositions are substantially taught by the references ,see MPEP § 2112.01 (“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). . . “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).”).
WO 375 and Brougham, are combined for the proposition that the peracetic acid compositions with the recited stabilizers are known, see, for example, Examples or WO 375 and Brougham which teach combinations of hydroxyethylidene diphosphonic acid and dipicolinic acid. Their combination for the proposition that the stabilizers are useful in peracid compositions is obvious since Hilgren even mentions the same stabilizers.
US 857 discloses a composition for production of a sterilizer, containing an ester of a polyhydric alcohol and an organic acid, and (Bl) hydrogen peroxide or (B2) an inorganic peroxide releasing hydrogen peroxide in water in its paragraph [0004 ]- [0005] & [0027]. Hydrogen peroxide corresponds to the oxidizing agent of the present invention. Polyhydric alcohols such as glycerin and organic acids such as octanoic acid are described in paragraphs [0020 ]- [0021]. Amounts of the polyhydric alcohol and the organic acid in US 857 overlap with those of the present invention (See paragraph [0028].). It is also stated in paragraphs [0029]-[0030] that an alkaline pH adjusting agent is used to adjust pH to 8 to 12.
Any difference in pH of the composition is dependent on the amount of the source of alkalinity. The amount of a source of alkalinity will be automatically adjust pH
With regard to refrigeration, Ventura demonstrates that refrigeration is not needed:
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Therefore, the formulation, and its transport without refrigeration, is prima facie obvious.
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 1-6, 8-16, 31-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11939241 in view of Ventura.
Although the claims at issue are not identical, they are not patentably distinct from each other. Specifically, the conflicting claims recite formulations that anticipate those covered by the rejected claims. Alternatively, the conflicting claims do not recite the instant formulations with particularity so as to amount to anticipation (See M.P.E.P. § 2131: "[t]he identical invention must be shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).). However, the conflicting claims recite the elements of the instant formulations with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. See M.P.E.P. § 2143).
The functional limitations are deemed to be necessarily possessed by the compositions recited in the conflicting claims, since these formulations and those of the instant claims are substantially the same.
The recited formulation can be transported without the need for refrigeration, as outlined by Ventura, above.
Claims 1-6, 8-16, 31-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 11180385 in view of Ventura.
Although the claims at issue are not identical, they are not patentably distinct from each other. Specifically, the conflicting claims recite formulations that anticipate those covered by the rejected claims. Alternatively, the conflicting claims do not recite the instant formulations with particularity so as to amount to anticipation (See M.P.E.P. § 2131: "[t]he identical invention must be shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).). However, the conflicting claims recite the elements of the instant formulations with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. See M.P.E.P. § 2143).
The functional limitations are deemed to be necessarily possessed by the compositions recited in the conflicting claims, since these formulations and those of the instant claims are substantially the same.
The recited formulation can be transported without the need for refrigeration, as outlined by Ventura, above.
Claims 1-6, 8-16, 31-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 9902627 in view of Ventura.
Although the claims at issue are not identical, they are not patentably distinct from each other. Specifically, the conflicting claims recite formulations that anticipate those covered by the rejected claims. Alternatively, the conflicting claims do not recite the instant formulations with particularity so as to amount to anticipation (See M.P.E.P. § 2131: "[t]he identical invention must be shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).). However, the conflicting claims recite the elements of the instant formulations with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. See M.P.E.P. § 2143).
The functional limitations are deemed to be necessarily possessed by the compositions recited in the conflicting claims, since these formulations and those of the instant claims are substantially the same.
The recited formulation can be transported without the need for refrigeration, as outlined by Ventura, above.
Claims 1-6, 8-16, 31-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 9321664 in view of Ventura.
Although the claims at issue are not identical, they are not patentably distinct from each other. Specifically, the conflicting claims recite formulations that anticipate those covered by the rejected claims. Alternatively, the conflicting claims do not recite the instant formulations with particularity so as to amount to anticipation (See M.P.E.P. § 2131: "[t]he identical invention must be shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).). However, the conflicting claims recite the elements of the instant formulations with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. See M.P.E.P. § 2143).
The functional limitations are deemed to be necessarily possessed by the compositions recited in the conflicting claims, since these formulations and those of the instant claims are substantially the same.
The recited formulation can be transported without the need for refrigeration, as outlined by Ventura, above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARL J PUTTLITZ whose telephone number is (571)272-0645. The examiner can normally be reached on Monday to Friday from 9 a.m. to 5 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Gregory Emch, can be reached at telephone number 571-272-8149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARL J PUTTLITZ/ Primary Examiner, Art Unit 1646
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