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 .
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.
Claim 6 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 6 recites “wherein the corrosion inhibitor further comprises an additional imidazoline.” However, there is no provision for an imidazoline in claim 1, upon which claim 6 depends, and, as such, it appears there is thus a lack of antecedent basis for an additional imidazoline. The Examiner acknowledges [0078] of the specification as filed recites wherein imidazolines and imido imidazolines are referred to as fatty acid amine condensates and imido fatty acid amine condensates. However, such has not been clearly identified within the claims; consistent terminology and recitations throughout the claims 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 Bennett et al. (US 2018/0148632).
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, a fatty acid amine condensate and at least one sulfur compound as claimed.
Bennett et al. teaches corrosion inhibitor compositions for providing protection to oilfield production equipment against corrosive fluids and gases ([0006]) wherein the corrosion inhibitor can comprise a combination of corrosion inhibitors that include an imidazoline, including various fatty acid amine condensates, and a quaternary ammonium compound ([0015]-[0037]; [0055]-[0072]), wherein the quaternary ammonium compound has the structure of Formula (IV) ([0037]); a sulfur-containing compound can be included therewith for the purpose of enhancing the corrosion inhibiting and cleaning performance as a synergist ([0085]). The sulfur-containing compound can be present in an amount of about 1-20 wt% ([0084]) and the corrosion inhibitor component can be present in an amount of 5-95 wt%, with a preferable amount thereof in the composition being 20-30 wt% ([0053]).
Since Webber et al. suggests wherein the AA-LDHI does not react with any corrosion inhibitor and Bennett et al. teaches a corrosion inhibitor comprising a quaternary ammonium compound of Formula IV, a fatty acid amine condensate, and a sulfur compound as a synergist for the purpose of enhancing corrosion inhibiting and cleaning performance of a corrosion inhibiting system comprising such a quaternary ammonium compound and fatty acid amine condensate, it would have been obvious to one having ordinary skill in the art to try such a 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 Bennett et al. teaches the corrosion inhibitor as suitable for use in providing corrosion inhibiting protection to oilfield equipment against corrosive fluids and gases, 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 by Bennett et al., 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 Bennett 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, Bennett et al. further suggests wherein the corrosion inhibitor further comprises one as claimed ([0054]-[0075]). As such, when utilizing the corrosion inhibitor of Bennett 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 Bennett 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 Bennett et al. since such corrosion inhibitors are not required for inclusion by Webber et al. in view of Bennett 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, Bennett 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, Bennett et al. further suggests wherein the corrosion inhibitors comprise a component as claimed ([0075]-[0076]; 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 the components instantly claimed. 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 claims as unpatentable over Webber et al. in view of Bartels et al. have been considered; the Examiner acknowledges Applicant’s amendments to independent claim 1 to require the corrosion inhibitor comprise the additional components of a fatty acid amine condensate and at least one sulfur compound and Bartels et al.’s lack of teaching thereof. As such, the rejection has been withdrawn. However, a new grounds of rejection has been made over Webber et al. in view of Bennett et al. as Bennett et al. suggests a corrosion inhibitor comprising the combination of components instantly claimed.
The Examiner acknowledges Applicant’s further arguments pertaining to the unexpected synergistic results for the claimed combination that would not have been predicted from the cited references, as well as wherein Table 8 of the specification shows superior results for the AA-LDHI/CI combination product 6 containing a quaternary ammonium compound, a fatty acid amine condensate and a sulfur compound.
However, instant independent claim 1 recites a composition that includes from about 26-99.9 wt% of the AA-LDHI that is a zwitterionic compound or a cationic ammonium compound and from about 0.01-50 wt% of the corrosion inhibitor that comprises the instantly claimed components.
Whether the unexpected/superior results obtained by Applicant are indeed the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
In the instant case, it is unclear if the unexpected/superior results for AA-LDHI/CI combo product 6 indeed are achieved with each and every combination of percentages of AA-LDHI and CI over the extensive range claimed. Furthermore, the corrosion inhibitor of product 6 appears to consist of a quaternary ammonium compound, a fatty acid amine condensate and a sulfur compound. Instant claim 1 recites the corrosion inhibitor as comprising such components, and, thus attempts to more broadly define the invention than that for which the alleged superior results are achieved. As such, the new grounds of rejection has been presented above.
The Examiner acknowledges Applicant’s request to hold the double patenting rejection in abeyance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2013/0228095, US 6866797 and US 2021/0253938 each teach a corrosion inhibitor comprising a quaternary ammonium compound, a fatty acid amine condensate and at least one sulfur compound.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
07/21/26
Prosecution Insights