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.
Claims 1 and 4-14 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. The term “low” in each of independent claims 1 and 5 is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “low” in the phrase “low does hydrate inhibitor” is a relative term which renders the scope of the claim indefinite; it is unclear if the term “low” is intended to impart any degree to the amount of the dose of such a hydrate inhibitor that is intended to be included in the composition; as the claim recites an extensive weight percent thereof included in the composition, it does not appear that any particular amount of the AA-LDHI is indeed associated with the term “low” since the composition may indeed include up to 99.9 wt% thereof within the composition. Furthermore, Applicant’s amendments to independent claim 1 deleting the “low” end of the range, i.e., 10-25.99% further obscure the use of the term “low.” Applicant is advised to define the AA-LDHI within the claim by the specific zwitterionic/cationic ammonium compounds intended as used therefor. Claims 4 and 6-14 are rejected by virtue of their dependency upon a rejected base claim.
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. Independent claim 1, as elected by Applicant, reads “wherein the corrosion inhibitor comprises a quaternary ammonium compound.” Claim 6 recites “an additional imidazoline” and “an additional imidazolinium compound.” Since Applicant has elected wherein the corrosion inhibitor comprises a quaternary ammonium compound, it appears there is insufficient antecedent basis for an additional imidazoline and/or imidazolinium compound therein as one is not required in claim 1, upon which claim 6 depends.
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 and 4-14 are rejected under 35 U.S.C. 103 as being unpatentable over Moloney et al. (US 2019/0040301 – cited previously) in view of Webber et al. (US 2015/0148266- cited previously).
With respect to independent claim 1, Moloney et al. discloses a hydrate inhibitor and corrosion inhibitor composition comprising: from about 10-99.9 wt% (i.e., Applicant’s instantly disclosed range and originally claimed range) of an anti-agglomerant hydrate inhibitor (AA-LDHI) ([0083]); from about 0.01-50 wt% of a corrosion inhibitor ([0048]), wherein the corrosion inhibitor is a quaternary ammonium compound ([0063]-[0066]); and at least one additional functional ingredient ([0074]-[0082]; [0085]-[0088]), solvent ([0046]), or a combination thereof.
Moloney et al. discloses wherein the composition comprises a gas hydrate inhibitor, wherein such can be present in an amount of 0.1-25 wt%, and, further, wherein such is an anti-agglomerate gas hydrate inhibitor ([0083]), thereby suggesting an amount thereof overlapping the range instantly disclosed by Applicant. Due to the absence of evidence of the specificity and criticality of the range as amended to now begin at 26 wt%, it is the position of the Office that such an amount of AA-LDHI within the composition of Moloney et al. would be obvious to one having ordinary skill in the art insofar as because it has been held, "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) and for at least the reasons as further presented below.
Moloney et al., however, fails to provide for specific examples of the AA-LDHI, and, thus, fails to suggest such as a cationic ammonium compound, and, more specifically, Applicant’s elected Formula (IIIb).
Webber et al. teaches anti-agglomerate (AA) gas hydrate inhibitors suitable for use in inhibiting the formation of gas hydrate agglomerates in a fluid, particularly those which may be contained in an oil or gas pipeline or refinery. Such have Formula 1B ([0009]), corresponding to Applicant’s instantly elected Formula (IIIb), wherein such AAs are added in an effective amount to inhibit gas hydrate agglomeration in the fluid, particularly in hydrocarbon production and transportation systems where hydrate agglomerates may form ([0016]-[0017]); such effective amounts can be determined through routine experimentation with a particular set of conditions and/or in a specific system to determine the optimum dosage range to avoid the formation of problematic irreversible, harmful gas hydrate masses so that gas hydrate blockage is inhibited ([0038]-[0039]). Such compositions are considered beneficial in that they do not interfere or react with any corrosion inhibitor or other production chemical ([0046]) and they do not form foams or emulsions when stored or upon use ([0047]). They are further suggested as compatible with other oil field flow assurance components ([0056]) and can be used anywhere in the system where there is a potential for gas hydrate formation ([0060]).
Since Moloney et al. discloses wherein the composition can include a gas hydrate inhibitor, with suitable examples thereof including AAs and Webber et al. teaches an AA that can be included in a system that includes a corrosion inhibitor and will not interfere with the function thereof so as to prevent the formation of harmful as hydrate masses, as well as wherein such is compatible with other oil field flow assurance components and can be used anywhere in the system where there is a potential for gas hydrate formation, it would have been obvious to one having ordinary skill in the art to try an AA such as Formula 1B, i.e., Applicant’s elected Formula (IIIb), as the AA gas hydrate inhibitor in the composition of Moloney et al. in order to yield the predictable result of inhibiting gas hydrate blockage anywhere in the system where there is a potential for gas hydrate formation while preventing any interference with the corrosion inhibitor therein. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
With regard to the particular amounts of AA and corrosion inhibitor, Moloney et al. clearly discloses amounts for each of the AA and quaternary ammonium compound corrosion inhibitor overlapping the extensive weight percent ranges instantly disclosed by Applicant for each component; since Webber et al. suggests where one of ordinary skill in the art can determine an effective amount thereof to use through routine experimentation with a particular set of conditions and/or in a specific system to determine optimum dosage range to avoid the formation of problematic irreversible, harmful gas hydrate masses so that gas hydrate blockage is inhibited, given the suitable disclosed amounts for use in the composition of Moloney et al., along with such guidance by Webber et al., one having ordinary skill in the art would recognize a suitable amount thereof for use in the composition in order to effectively inhibit the formation of gas hydrates 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.” 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 percents for each component as critical, as exemplified by the extensiveness of each range claimed and disclosed for each of the AA-LDHI and corrosion inhibitor, as well as the explicitly establish the instantly claimed amount of 26 wt% of the AA-LDHI as critical and it is unclear if any unexpected results are achieved by using the now instantly claimed weight percent ranges, particularly over the entirety of each claimed range. Since the composition of Moloney et al. provides corrosion inhibition and further is disclosed to inhibit gas hydrates with the inclusion of an AA therein and Webber et al. teaches an AA that indeed prevents the formation of gas hydrates when used in effective amounts that are determinable through routine experimentation, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent ranges for each, and, as such, the determination of optimal weight percents for each of the AA-LDHI and corrosion inhibitor would be achievable through routine experimentation in the art.
With respect to dependent claim 4, Webber et al. teaches wherein the cationic ammonium compound has Formula (IIIb) as claimed ([0017]).
With respect to independent claim 5, Moloney et al. discloses a hydrate inhibitor and corrosion inhibitor composition comprising: from about 10-99.9 wt% (i.e., Applicant’s instantly disclosed range and originally claimed range) of an anti-agglomerant hydrate inhibitor (AA-LDHI) ([0083]); from about 0.01-50 wt% of a corrosion inhibitor ([0048]), wherein the corrosion inhibitor is a quaternary ammonium compound ([0063]-[0066]); and at least one additional functional ingredient ([0074]-[0082]; [0085]-[0088]), solvent ([0046]), or a combination thereof.
Moloney et al. discloses wherein the composition comprises a gas hydrate inhibitor, wherein such can be present in an amount of 0.1-25 wt%, and, further, wherein such is an anti-agglomerate gas hydrate inhibitor ([0083]), thereby suggesting an amount thereof overlapping the range instantly disclosed by Applicant. Due to the absence of evidence of the specificity and criticality of the range as amended to now begin at 26 wt%, it is the position of the Office that such an amount of AA-LDHI within the composition of Moloney et al. would be obvious to one having ordinary skill in the art insofar as because it has been held, "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) and for at least the reasons as further presented below.
Moloney et al., however, fails to provide for specific examples of the AA-LDHI, and, thus, fails to suggest such as a cationic ammonium compound, and, more specifically, Applicant’s elected Formula (IIIb).
Webber et al. teaches anti-agglomerate (AA) gas hydrate inhibitors suitable for use in inhibiting the formation of gas hydrate agglomerates in a fluid, particularly those which may be contained in an oil or gas pipeline or refinery. Such have Formula 1B ([0009]), corresponding to Applicant’s instantly elected Formula (IIIb), wherein such AAs are added in an effective amount to inhibit gas hydrate agglomeration in the fluid, particularly in hydrocarbon production and transportation systems where hydrate agglomerates may form ([0016]-[0017]); such effective amounts can be determined through routine experimentation with a particular set of conditions and/or in a specific system to determine the optimum dosage range to avoid the formation of problematic irreversible, harmful gas hydrate masses so that gas hydrate blockage is inhibited ([0038]-[0039]). Such compositions are considered beneficial in that they do not interfere or react with any corrosion inhibitor or other production chemical ([0046]) and they do not form foams or emulsions when stored or upon use ([0047]). They are further suggested as compatible with other oil field flow assurance components ([0056]) and can be used anywhere in the system where there is a potential for gas hydrate formation ([0060]).
Since Moloney et al. discloses wherein the composition can include a gas hydrate inhibitor, with suitable examples thereof including AAs and Webber et al. teaches an AA that can be included in a system that includes a corrosion inhibitor and will not interfere with the function thereof so as to prevent the formation of harmful as hydrate masses, as well as wherein such is compatible with other oil field flow assurance components and can be used anywhere in the system where there is a potential for gas hydrate formation, it would have been obvious to one having ordinary skill in the art to try an AA such as Formula 1B, i.e., Applicant’s elected Formula (IIIb), as the AA gas hydrate inhibitor in the composition of Moloney et al. in order to yield the predictable result of inhibiting gas hydrate blockage anywhere in the system where there is a potential for gas hydrate formation while preventing any interference with the corrosion inhibitor therein. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
With regard to the particular amounts of AA and corrosion inhibitor, Moloney et al. clearly discloses amounts for each of the AA and quaternary ammonium compound corrosion inhibitor overlapping the extensive weight percent ranges instantly disclosed by Applicant for each component; since Webber et al. suggests where one of ordinary skill in the art can determine an effective amount thereof to use through routine experimentation with a particular set of conditions and/or in a specific system to determine optimum dosage range to avoid the formation of problematic irreversible, harmful gas hydrate masses so that gas hydrate blockage is inhibited, given the suitable disclosed amounts for use in the composition of Moloney et al., along with such guidance by Webber et al., one having ordinary skill in the art would recognize a suitable amount thereof for use in the composition in order to effectively inhibit the formation of gas hydrates 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.” 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 percents for each component as critical, as exemplified by the extensiveness of each range claimed and disclosed for each of the AA-LDHI and corrosion inhibitor, as well as the explicitly establish the instantly claimed amount of 26 wt% of the AA-LDHI as critical and it is unclear if any unexpected results are achieved by using the now instantly claimed weight percent ranges, particularly over the entirety of each claimed range. Since the composition of Moloney et al. provides corrosion inhibition and further is disclosed to inhibit gas hydrates with the inclusion of an AA therein and Webber et al. teaches an AA that indeed prevents the formation of gas hydrates when used in effective amounts that are determinable through routine experimentation, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent ranges for each, and, as such, the determination of optimal weight percents for each of the AA-LDHI and corrosion inhibitor would be achievable through routine experimentation in the art.
With respect to dependent claim 6, Moloney et al. discloses wherein the corrosion inhibitor further comprises one as claimed ([0024]-[0042]; [0049]-[0062]; [0067]-[0071]).
With respect to dependent claim 7, Moloney et al. does not disclose the inclusion of either a boron-hydroxyalkyl(amine) compound or calcium nitrate corrosion inhibitor within any portion of the disclosure, and, thereby suggests wherein the composition does not include any boron-hydroxyalkyl(amine) compounds or calcium nitrate corrosion inhibitors. The reference states in one location wherein the composition can comprise a thiourea in [0072], and, thus implies the composition does not. As such, it is the position of the Office it would have been obvious to one having ordinary skill in the art to exclude the compounds noted in claim 7 from the composition of Moloney et al. since such compounds are not required for inclusion therein and it has been held 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). Additionally, with regard to the thiourea compound, Moloney et al. suggests wherein the composition can be free/substantially free of an organic sulfur compound ([0073]), thereby further exemplifying the obviousness of the omission thereof from the composition should any function attributed thereto not be desired.
With respect to dependent claim 8, Moloney et al. suggests wherein the corrosion inhibitor comprise a quaternary ammonium compound ([0063]-[0065]), a fatty acid amine condensate ([0049]-[0052]; [0070]; [0082]) and at least one sulfur compound ([0024]) and a phosphate ester ([0067]-[0069]).
With respect to dependent claim 9, Moloney et al., in view of Webber et al., suggests the inclusion of the AA-LDHI elected by Applicant, as set forth above. With regard to the inclusion of a single AA-LDHI, Moloney et al. discloses wherein the composition can include a gas hydrate inhibitor; Webber et al. discloses the use of a single AA-LDHI, i.e., Applicant’s elected formula. As such, it is the position of the Office, it would have been obvious to one having ordinary skill in the art to include the single AA-LDHI of Webber et al. as the “a gas hydrate inhibitor” in the composition in Moloney et al., in order to inhibit the formation of gas hydrates therewith as such is suggested as used in an effective amount to inhibit the formation of such and without any additional AA-LDHIs, and, thus, one of ordinary skill in the art would recognize the ability to use such as a single AA-LDHI in order to yield predictable results.
With respect to dependent claim 10, Moloney et al., in view of Webber et al., suggests the inclusion of the AA-LDHI elected by Applicant, as set forth above. With regard to the exclusion of a quaternary ammonium compound AA-LDHI or a halide-containing AA-LDHI, Moloney et al. discloses wherein the composition can include a gas hydrate inhibitor; Webber et al. discloses the use of a single AA-LDHI, i.e., Applicant’s elected formula, wherein such excludes a quaternary ammonium compound AA-LDHI or a halide-containing AA-LDHI. As such, it is the position of the Office, it would have been obvious to one having ordinary skill in the art to exclude any quaternary ammonium compound or halide containing AA-LDHIs as the “a gas hydrate inhibitor” in the composition in Moloney et al., in order to inhibit the formation of gas hydrates with the AA-LDHI of Webber et al. as such is suggested as used in an effective amount to inhibit the formation of such and without any additional AA-LDHIs, and, thus, one of ordinary skill in the art would recognize the ability to use such alone in the composition of Webber et al. and/or without any quaternary ammonium compound or halide containing AA-LDHIs in order to yield predictable results. Additionally, since such compounds are not required for inclusion by either Moloney et al. or Webber et al., the omission of such from the composition would indeed be obvious as it has been held 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).
With respect to dependent claim 11, Moloney et al. discloses wherein the solvent comprises a polar and/or nonpolar solvent ([0107]).
With respect to dependent claim 12, Moloney et al. discloses wherein the additional function ingredient comprises one as claimed ([0074]-[0082]; [0085]-[0088]).
With respect to dependent claim 13, Moloney et al. notes wherein the composition can comprise a kinetic hydrate inhibitor ([0084]). The reference further suggests substituents can refer to fluoroalkyl groups ([0140]). As such, it would have been obvious to one having ordinary skill in the art to try a composition free of such kinetic hydrate inhibitors and fluoroalkyl compounds since such are not required components of the composition of Moloney et al. and therefore one of ordinary skill would recognize the omission thereof as obvious should the functions attributed thereto be not 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, Moloney et al. discloses wherein the compounds, i.e., corrosion inhibitor, can be introduced with an additional solvent depending upon the application ([0107]). The reference further suggests wherein the compounds of the disclosure can be injected into a gas stream as an aqueous or non-aqueous solution, mixture, or slurry ([0111]), as well as wherein the composition can be applied continuously or in batch/intermittent treatments ([0115]-[0116]). Webber et al. teaches wherein the AA compounds can be stored ([0047]). 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 function ingredient, solvent or combination thereof, since Moloney et al. teaches wherein the corrosion inhibitor can be introduced with an additional solvent and Webber et al. teaches wherein the AA can be stored, it would have been obvious to one having ordinary skill in the art to store the AA composition until such time that an effective amount thereof is deemed necessary so that such can be added/injected into the corrosion inhibitor-solvent combination for provision to the intended location in the system for treatment therein in order to prevent the formation of gas hydrate agglomerates.
Response to Arguments
Applicant’s arguments with respect to the 35 USC 112(a) rejections, as set forth in the previous office action, have been fully considered and are persuasive. The 35 USC 112(a) rejections, as set forth therein, have been withdrawn.
Applicant's arguments with respect to the 35 USC 112(b) rejections of claims 1 and 4-14 with regard to the use of the term “low” have been fully considered but they are not persuasive.
Applicant asserts the term is well known in the art as a more cost-effective alternative as they generally require a dose of less than about 2%. Although such is stated in the Background of Applicant’s specification, it is the position of the Office, with respect to the language of the claims, the term is indefinite. Although the specification states less than about 2% can be used in a does, the instant claims require a percentage thereof with a minimum of 26 wt% and a maximum of 99.9 wt% relative to the overall composition. Therefore, it is unclear as to the extent of hydrate inhibitors Applicant is intending to seek protection of since it appears Applicant is claiming the use of an amount thereof greater than the 2% for which such chemicals are known in the art. The Examiner suggests inclusion of the specific chemical structure, i.e., Applicant’s elected hydrate inhibitor, within the independent claim in order to associate a specific “low” dosage hydrate inhibitor Applicant intends as the low AA-LDHI.
Applicant's arguments with respect to the 35 USC 103 rejections of claims as unpatentable over Moloney et al. in view of Webber et al. have been fully considered but they are not persuasive.
The Examiner acknowledges Applicant’s amendments to the independent claims changing the low end of the weight percent range of the AA-LDHI from 10 wt% to 26 wt%.
The Examiner acknowledges Applicant’s comments pertaining to Moloney teaching anti-corrosion thiol compounds that can be included in a composition that includes a gas hydrate inhibitor and a corrosion inhibitor.
The Examiner acknowledges Applicant’s comments at A. stating there is no motivation to combine Moloney and Webber.
Applicant asserts the cited reference “must teach or suggest the claimed invention, and/or there must be some objective modification to modify and/or combine the references to arrive at the claimed invention.”
Applicant asserts merely because Moloney teaches that a gas hydrate inhibitor may be included in the composition does not mean a person skilled in the art would look to include the gas hydrate inhibitor of Webber into that composition.
The Examiner respectfully disagrees. Moloney teaches the inclusion of a gas hydrate inhibitor. Webber teaches Applicant’s claimed and elected gas hydrate inhibitors as an improvement over known gas hydrate inhibitors as such are a cost effective alternative and useful for effectively preventing agglomeration of gas hydrate in oil and gas transportation and handling processes. As such, when choosing a gas hydrate inhibitor to use in the composition of Moloney, it is the position of the Office that an option such as that deemed as beneficial by Webber, would be an obvious option to employ from the finite list of possibilities disclosed therein.
Applicant notes Moloney’s composition focuses on the use of thiol compounds for corrosion inhibition and only teaches that a gas hydrate inhibitor and corrosion inhibitor may be included as an additional component, and, as such, the composition of Moloney would have no objective motivation to remove those thiol compounds to solely rely on the gas hydrate inhibitor and corrosion inhibitor, as presently claimed.
The Examiner notes the rejection does not state to remove the thiol compounds of Moloney, but rather, utilize the AA-LDHI of Webber et al. as a gas hydrate inhibitor with the 0.01-50 wt% of corrosion inhibitor comprising a quaternary ammonium compound, disclosed by Moloney.
The Examiner notes, the instant claims are drawn to a composition comprising, and, therefore, the thiol compound of Moloney in the composition does not prevent Moloney from teaching the composition components as instantly broadly claimed.
Should Applicant intend to rely solely on the gas hydrate inhibitor and corrosion inhibitor presently claimed as the invention, Applicant is advised to amend the preamble of the claim to require such, i.e., replace “comprising” with -consisting of-. Such amendments would exclude Moloney as a reference, since, as noted by Applicant, Moloney requires the thiol compound therein.
Applicant asserts at B that there is no objective reason to combine as Webber provides a redundant advantage in view of Moloney.
The Examiner notes the cost effectiveness of the inhibitor of Webber as set forth above as one objective reason to combine Webber.
At C., Applicant asserts the combination fails to render the present amounts obvious.
The Examiner notes the modified rejection with respect thereto as now presented above. Furthermore, the Examiner maintains, prima facie obviousness is present as it has been held "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Furthermore, 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 percents for each component as critical, as exemplified by the extensiveness of each range claimed and disclosed for each of the AA-LDHI and corrosion inhibitor, as well as the explicitly establish the instantly claimed amount of 26 wt% of the AA-LDHI as critical and it is unclear if any unexpected results are achieved by using the now instantly claimed weight percent ranges, particularly over the entirety of each claimed range. Since the composition of Moloney et al. provides corrosion inhibition and further is disclosed to inhibit gas hydrates with the inclusion of an AA therein and Webber et al. teaches an AA that indeed prevents the formation of gas hydrates when used in effective amounts that are determinable through routine experimentation, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent ranges for each, and, as such, the determination of optimal weight percents for each of the AA-LDHI and corrosion inhibitor would be achievable through routine experimentation in the art.
Applicant is advised to provide an exemplary composition of the specification showing any improved results and recite any specific weight percents of each component associated therewith and/or a narrower range thereof in order to more clearly define the invention over the prior art.
Conclusion
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.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
12/10/25