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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/25/26 has been entered.
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, 6-8 and 11-14 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. Independent claim 1 has been amended to require the structure of Formula IIIb. Within defining each of the components thereof, Applicant defines Z wherein within the options listed therefor, “R3” is recited. Applicant, however, fails to further identify and/or define what “R3” is, and, therefore, it is unclear as to what structures are encompassed by instantly claimed Formula IIIb when Z is a compound that includes “R3” therein. Clarification and defining of “R3” is required.
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, 6-8 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Webber et al. (US 2015/0148266 – cited previously) in view of Bartels et al. (US 2018/0346791).
With respect to independent claim 1, Webber et al. discloses a hydrate inhibitor and corrosion inhibitor composition ([0011]) consisting of (see claim 21, wherein the required components of the composition are the AA-LDHI, the corrosion inhibitor, which may be used in combination with an additional functional additive and a solvent): from about 26 wt% to about 99.9 wt% ([0011]) of an anti-agglomerant low dose hydrate inhibitor (AA-LDHI), wherein the AA-LDHI is a cationic ammonium compound having the structure of Formula IIIb ([0009]); a corrosion inhibitor ([0011]; [0046]; [0056]; [0058]); and at least one additional functional ingredient ([0046]; [0056]), solvent ([0058]), or a combination thereof ([0046]; [0056]; [0058]).
Webber et al. discloses the composition as set forth above, wherein a corrosion inhibitor is injected with the hydrate inhibitor; the reference further specifies wherein the hydrate compositions do not interfere or react with any corrosion inhibitor used in the system ([0046]). Webber et al., however, fails to specify a specific corrosion inhibitor employed and/or amount thereof, and, therefore, fails to identify such as a quaternary ammonium compound as elected by Applicant.
Bartels et al. teaches compositions including low dose hydrate inhibitors, including anti-agglomerate hydrate inhibitors ([0042]), wherein corrosion inhibitors are employed therewith, and generally suggested as included in an amount of 0.1-20 wt%, wherein specific amounts vary based on the system with which it is used ([0056]); exemplary corrosion inhibitors are suggested to include quaternary ammonium compounds ([0064]-[0066]).
Since Webber et al. suggests wherein the AA-LDHI does not react with any corrosion inhibitor and Bartels et al. teaches quaternary ammonium compounds as suitable for use as a corrosion inhibitor with anti-agglomerate low dose hydrate inhibitors, it would have been obvious to one having ordinary skill in the art to try a quaternary ammonium compound corrosion inhibitor in the composition of Webber et al. in order to yield the predictable result of imparting corrosion inhibition to the AA-LDHI composition therewith. Since Webber et al. discloses the hydrate inhibitors do not react with any corrosion inhibitors in the system and Bartels et al. teaches quaternary ammonium compounds as selected from a finite list of possibilities suitable for use as a corrosion inhibitor in a system that includes low dose hydrate inhibitors, one having ordinary skill in the art would recognize the ability to employ such in the composition of Webber et al. in order to yield predictable results.
With further regard to the amount of corrosion inhibitor, given the suggested amount of 0.1-20 wt% by Bartels et al., as well as the suggestion wherein the amount employed in a system in which it is used can vary, one having ordinary skill in the art would recognize the optimal amount thereof to employ in the composition of Webber et al. in order to effectively provide corrosion inhibition therewith 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). 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." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). 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). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed weight percent of corrosion inhibitor as critical, as exemplified by the extensiveness thereof, and it is unclear if any unexpected results are achieved by using the instantly claimed weight percents. Since the corrosion inhibitor of Bartels et al. is suggested as being provided for in an amount that overlaps the instantly claimed range, and, further, in an amount for inhibiting corrosion inhibition therewith in a composition that further provides anti-agglomerate hydrate inhibition, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent of corrosion inhibitor, and, as such, the determination of optimal percent thereof in the composition of Webber et al. would be achievable through routine experimentation in the art.
With respect to dependent claim 6, Bartels et al. further suggests wherein the corrosion inhibitor further comprises one as claimed ([0057], wherein a combination thereof is suggested; [0068]-[0073], wherein additional corrosion inhibitors are suggested). As such, when utilizing the quaternary ammonium corrosion inhibitor of Bartels et al., the further inclusion of a compound as claimed therewith would be obvious to one having ordinary skill in the art to try in order to yield predictable results, for at least the reasons set forth above.
With respect to dependent claim 7, neither Webber et al. nor Bartels et al. suggests the inclusion of a boron-hydroxylalkyl(amine) compound, urea or calcium nitrate corrosion inhibitor. As such, it is the position of the Office that it would have been obvious to one having ordinary skill in the art to exclude such compounds from the composition of Webber et al. in view of Bartels et al. since such corrosion inhibitors are not required for inclusion by Webber et al. in view of Bartels et al. and it has been held that the omission of an element and its function is obvious if the function of the element is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). In the instant case, Bartels et al. suggests suitable alternative corrosion inhibitors for use with the AA-LDHI, and, thus, any corrosion inhibiting function that would be imparted by the compounds of claim 7 is not necessary and/or desired.
With respect to further dependent claim 8, Bartels et al. further suggests wherein the corrosion inhibitors comprise the components as claimed ([0068]-[0073]; see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 11, Webber et al. discloses wherein the solvent comprises a polar and/or nonpolar solvent ([0052]-[0054]; [0057]-[0058]; [0061]).
With respect to dependent claim 12, Webber et al. discloses the additional functional ingredients as claimed ([0011]; [0056]).
With respect to dependent claim 13, Webber et al. teaches wherein the composition can include kinetic hydrate inhibitors ([0055]; [0059]). The reference additionally fails to teach any specific inclusion of a fluoroalkyl compound. Since the composition of Webber et al. can include a kinetic hydrate inhibitor, it is the position of the Office that such can therefore also not include such a kinetic hydrate inhibitor and, as such, it would have been obvious to one having ordinary skill in the art to try a composition free of kinetic hydrate inhibitors and fluoroalkyl compounds since such are not required components of the composition of Webber et al. and therefore one of ordinary skill would recognize the omission thereof as obvious should the functions attributed thereto not be desired and/or required, such as, for example, when a kinetic hydrate inhibitor is not necessary and when an alternative substituent to a fluoroalkyl is employed. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
With respect to dependent claim 14, Webber et al. discloses wherein the AA-LDHI can be injected with a corrosion inhibitor, in which instance a polar solvent is used ([0058]), as well as wherein individual inhibitors can be added to the fluid at separate ports ([0059]). Webber et al. additionally suggests wherein various additional functional additives can be used in combination with the corrosion inhibitor ([0056]). The AA-LDHI is further suggested as injected as prepared or formulated in an additional solvent depending on the application and requirements ([0061]). Although silent to the provision of wherein the composition is a two-part composition wherein the first part comprises the AA-LDHI and the second part comprises the corrosion inhibitor and the additional functional ingredient, solvent or combination thereof, it would have been obvious to one having ordinary skill in the art to formulate the composition as a two-part composition wherein the first part comprises the AA-LDHI to which the second part comprising the corrosion inhibitor and additional functional ingredient is added at, for example, a separate port, as suggested in [0059], in order to ensure the addition of the corrosion inhibitor and additional functional ingredient when such is deemed necessary and/or desired.
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 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-14 and 22 of copending Application No. 19/279,818 (‘818 herein) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘818 provides for a hydrate inhibitor and corrosion inhibitor composition comprising an amount of AA-LDHI overlapping that which is instantly claimed; furthermore, Applicant has elected an AA-LDHI of Formula IIIB therein, thereby corresponding to the AA-LDHI instantly claimed. ‘818 further recites in independent claim 1 the same weight percent of corrosion inhibitor, wherein such comprises a quaternary ammonium compound. Lastly, ‘818 includes at least one additional functional ingredient, solvent, or a combination thereof within the composition of claim 1, as is instantly claimed. As such, Applicant’s instantly claimed composition in claim 1 is fully encompassed by that which is recited in ‘818 and would thus be obvious thereover. Although instant claim 1 requires the composition to consist of the recited components, ‘818 provides for wherein the composition includes a single AA-LDHI in dependent claim 9, as well as wherein the composition does not include other AA-LDHI components in dependent claim 10. As such, it is the position of the Office that to provide for the instantly claimed composition consisting of such components would indeed be obvious thereover.
Instant dependent claims 6-8 and 11-14 mirror dependent claims 6-8 and 11-14 of ‘818 and therefore would also be obvious thereover.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments and amendments made with respect to the 35 USC 112, second paragraph, rejections, as set forth in the previous office action, have been fully considered and are persuasive. The 35 USC 112, second paragraph, rejections, as set forth therein, have been withdrawn.
Applicant’s arguments with respect to the rejection(s) of claim(s) as unpatentable over Moloney et al. in view of Webber et al. have been fully considered and are persuasive in view of Applicant’s amendments requiring the composition consist of the instantly claimed components; Moloney et al. indeed suggests additional components as present within the composition. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Webber et al. as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
04/08/26
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