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, claims 1-9 with traverse in the reply filed on 05/01/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). As such, non-elected claims 10-20 are being withdrawn as to a non-elected invention.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
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.
Claim(s) 1-7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by CN 113358316 A.
CN 113358316 A discloses doping natural gas (methane) flowing within a pipeline with both hydrogen gas (H2) and a liquid volume/carrier containing a corrosion inhibitor, see abstract, paragraphs [0060]-[0072] and claims. Applicant’s claims are thus deemed to be directly anticipated over CN 113358316 A said disclosure.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over CN 113358316 A in view of Moloney U.S. Patent Application Publication No.: 2017/0247798 A1.
CN 113358316 A has been described above and differs from Applicant’s claimed invention in that the reference does not seem to explicitly disclose what types of corrosion inhibitors are used.
Moloney discloses a corrosion inhibiting composition is provided which comprises a salt of a fatty acid-amine condensate and an aromatic solvent. The composition can be used in reducing, inhibiting or preventing corrosion of a metal surface used in recovery, transportation, refining or storage of a hydrocarbon fluid containing elemental sulfur or polysulfide, see abstract.
Moloney paragraph [0078] reads as followed: “The fluid or gas in which the composition is introduced can be contained in and/or exposed to many different types of apparatuses. For example, the fluid or gas can be contained in an apparatus that transports fluid or gas from one point to another, such as an oil and/or gas pipelines. The apparatus can be part of an oil and/or gas refinery, such as a pipeline, a separation vessel, a dehydration unit, or a gas line. The composition can be introduced to large diameter flow lines of from about 1 inch to about 4 feet in diameter, small gathering lines, small flow lines and headers. The fluid can be contained in and/or exposed to an apparatus used in oil extraction and/or production, such as a wellhead. The apparatus can be part of a coal-fired power plant. The apparatus can be a scrubber (e.g., a wet flue gas desulfurizer, a spray dry absorber, a dry sorbent injector, a spray tower, a contact or bubble tower, or the like). The apparatus can be a cargo vessel, a storage vessel, a holding tank, or a pipeline connecting the tanks, vessels, or processing units. The fluid or gas can be contained in water systems, condensate/oil systems/gas systems, or any combination thereof.”.
It would have been very obvious to one having ordinary skill in the art to use the disclosure of the secondary reference to Moloney as strong motivation to actually use a corrosion inhibitor comprising a salt of a fatty acid-amine condensate and an aromatic solvent as the corrosion inhibitor used in CN 113358316 A process of doping natural gas with hydrogen. As stated above, both references are in the same filed of endeavor.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over CN 113358316 A.
CN 113358316 A has been described above and differs from Applicant’s claimed invention in that it is unclear if the hydrogen gas is combined with a hydrocarbon before being added to the natural gas medium.
It would have been obvious to one having ordinary skill in the art actually combine the hydrogen gas with a hydrocarbon carrier prior to its addition to the natural gas stream. Such is an obvious addition to one having ordinary skill in the art because it would improve the dissolubility of the hydrogen gas within the natural gas medium.
Claim(s) 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. U.S. Patent Application Publication No.: 2013/0313165 A1.
Kim et al. discloses a method of simultaneously removing sulfur and mercury from a hydrocarbon material, such as crude oil, natural gas and natural gas condensate as well as the gas, light naphtha, heavy naphtha, kerosene, light gas oil (LGO), heavy gas oil (HGO), atmospheric oil residues and the like comprising: hydrotreating (i.e. contacting with hydrogen gas) the hydrocarbon material containing sulfur and mercury in the presence of a catalyst including a metal supported with a carrier to convert sulfur into hydrogen sulfide, and adsorb mercury on a metal active site or a carrier of the catalyst in the form of mercury sulfide, see abstract, paragraph [0005] and claim 1. Said process results in a hydrocarbon product which is much better suited for further petrochemical processes, see paragraph [0006].
Kim et al. further discloses comprising adding a sulfur compound, such as at least one selected from the group consisting of hydrogen sulfide, dimethylsulfide (DMS), dimethyldisulfide (DMDS), diethylsulfide (DES), diethyldisulfide (DEDS), and sour gas to the hydrocarbon material, see Examples 2-4 and claims 7-9. Please note that said sulfur compounds are known in the art to function as corrosion inhibitors of metal surfaces.
Applicant’s claims are thus deemed to be directly anticipated over Kim et al.’s said disclosure.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. U.S. Patent Application Publication No.: 2013/0313165 A1.
Kim et al. has been described above and differs from Applicant’s claimed invention in that it is unclear if the hydrogen gas is combined with a hydrocarbon before being added to the hydrocarbon material/medium.
It would have been obvious to one having ordinary skill in the art actually combine the hydrogen gas with a hydrocarbon carrier prior to its addition to the hydrocarbon material/medium. Such is an obvious addition to one having ordinary skill in the art because it would improve the dissolubility of the hydrogen gas within the hydrocarbon material/medium.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 19 of copending Application No. 18/804,570 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims are deemed to be a subset of the pending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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