DETAILED ACTION
Status of Claims:
Claims 1-23 are pending.
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 Objections
Claim 11 is objected to because of the following informalities: Claim 11 refers to “a water oil separator vessel (WOSEP)”. The acronym used does not appear to be correct as it is previously used to refer to a “water oil separator plant”. The ”P” appears to corresponding to “plant” not “vessel” . Appropriate correction is required.
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 1-10, 16, 20 and 21 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.
Regarding Claim 1:
The claim refers to “the water surface” and states that “a top of the tube is above the water surface, and a bottom of the tube is below the water surface”. There is insufficient bases for “the water surface” within the claims. An “oil-in-water-emulsion” is not part of the structure of the plant, but the material acted upon by the plant, therefore there may be no water surface, if the gravity separation vessel is empty or the location of the water surface will change as the gravity separation vessel fills. It is therefore not clear where the locations of the top of the tube and bottom of the tube are limited to.
Regarding Claim 4:
The claim states “wherein the oil-in-water emulsion comprises…through an inlet nozzle into a separation compartment”. It is not clear if the inlet nozzle and separation compartments are required structural parts of the plant or only limiting how the oil-in-water emulsion is dispersed. It is further noted that the oil-in-water emulsion is not considered structural feature of the WOSEP, but is the material being worked upon. For the purposes of examination the inlet nozzle and separation compartment are not considered to be part of the WOSEP.
Regarding Claim 16:
The claim states “iterating: determining if the oil-in-water concentration had dropped below the pre-determined threshold: and deactivating the valve downstream of the outlet.” It is not clear if deactivating the valve is based on the determining or always required.
Regarding Claim 20:
The claim states “comprising an axis perpendicular to the water surface…” This limitation renders the claim indefinite because it is not clear if any additional structure to the tube is being required. The claim is directed to the tube itself, not the WOSEP.
Regarding Claim 21:
The claim uses the term “substantial”. It is not clear what level of allowing oil to flow through or rejecting water is required by the term “substantial”.
Claims 2-10 are indefinite as they depend from claim 1, which is indefinite.
Claim Interpretation
Regarding Claim 1:
The claim states “an inlet for oil-in-water emulsion”, “an outlet for separated oil”, “a water outlet…for separated water”, and “an outlet… to allow oil and water to drain”. It is noted that the limitations following “for” and “to allow” are the intended use of the inlet and outlets and not structural features of the WOSEP. Therefor the limitations only add patentable weight to the extent that the prior art must be capable of the same use.
Regarding Claims 17-23:
Claim 17 states “A tube in a water compartment…”. The claim is interpreted as being directed to the “tube” only, and not the combination of the tube and the water compartment. Limitations directed to the location of the tube within the water compartment do not add patentable weight to the tube itself.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 and 17-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lynch (USPN 4,333,835) in view of Alghunaimi et al (US 2021/0062355).
Regarding Claim 1:
Lynch teaches the water-oil separation plant (WOSEP), comprising: a gravity separation vessel (tank 149) (see col. 9 lines 12-16, fig. 8); an inlet for an oil-in-water emulsion (inlet 152) (see col. 9 lines 16-19); an oil outlet for separated oil (outlet 172) (see col. 10 lines 1-2, fig. 8); a water compartment (separation chamber 159) in the gravity separation vessel (see col. 9 lines 25-31, fig. 8); a water outlet (submerged exit opening 174) (see col. 10 lines 16-21, fig. 8) from water compartment for separated water; a tube of hydrophobic material (one of the vertical coalescer tubes 72 which are hydrophobic) (see col. 5 lines 48-51, col. 9 lines25-31) with an axis perpendicular to the water surface in the water compartment (see fig. 8), wherein a top of the tube is above the water surface, and a bottom of the tube is below the water surface (any location could be above or below a water surface depending on the fill level, therefore this limitation is interpreted as only requiring the tubes to be vertical (perpendicular to the water surface) such that a top of the tube is above a bottom of the tube); and an outlet coupled to the bottom of the tube to allow oil and water to drain from the tube (material settles from within the tube through a grate at the under of the tube. As material passes out of the bottom of the tube there is inherently an outlet coupled to the bottom of the tube) (see col. 5 lines 60-68). Allowing oil and water to drain from the tube is the intended use of the outlet and not a structural feature and only adds patentable weigh to the extent that the prior art must be capable of the same function. As the tube is open and the bottom oil and water could drain from the outlet.
Lynch does not teach that the tube is hydrophobic mesh.
Alghunaimi teaches an oil in water separation material made from a hydrophobic mesh (see Abstract, para. 0001).
Lynch and Alghunaimi are analogous inventions in the art of oil-in-water separation. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the hydrophobic material of Lynch with the hydrophobic mesh of Alghunaimi because it allows for a separation of oil from water of greater than 99% and is applicable for use in combination with gravity separation (see Alghunaimi para. 0005, para. 0072) and it is desirable in Lynch to separate oil and water (see Lynch col. 10 lines 38-54). Further it is the simple substitution of one known hydrophobic material with another known hydrophobic material, obviously resulting in the passage of oil and rejection of water with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 2:
Lynch as modified, teaches the WOSEP of claim 1, wherein the hydrophobic mesh comprises a stainless-steel copper-coated mesh functionalized with a hydrophobic material (see Alghunaimi para. 0004).
Regarding Claim 3:
Lynch, as modified, teaches the WOSEP of claim 2, wherein the hydrophobic material is a fatty acid (lauric acid) (see Alghunaimi para. 0004).
Regarding Claim 4:
Lynch, as modified, teaches the WOSEP of claim 1, wherein the oil-in-water emulsion comprises produced water at a concentration in a range of about 0.01 vol. % to about 10 vol. % oil dispersed in a bulk water flow through an inlet nozzle into a separation compartment. The oil-in-water emulsion is the material being worked upon by the WOSEP, not a structural component of the WOSEP, therefore the concentration of the oil-in-water emulsion, and how the emulsion is dispersed does not add patentable weigh to the claims.
Regarding Claim 17:
Lynch teaches the tube in a water compartment of a water oil separator vessel (WOSEP), comprising a hydrophobic material that separates oil from water in the water compartment (one of the vertical coalescer tubes 72 which are hydrophobic) (see col. 5 lines 48-51, col. 9 lines25-31).
Lynch does not teach that the material is mesh.
Alghunaimi teaches an oil in water separation material made from a hydrophobic mesh (see Abstract, para. 0001).
Lynch and Alghunaimi are analogous inventions in the art of oil-in-water separation. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the hydrophobic material of Lynch with the hydrophobic mesh of Alghunaimi, such that the tube is a hydrophobic mesh, because it allows for a separation of oil from water of greater than 99% and is applicable for use in combination with gravity separation (see Alghunaimi para. 0005, para. 0072) and it is desirable in Lynch to separate oil and water (see Lynch col. 10 lines 38-54). Further it is the simple substitution of one known hydrophobic material with another known hydrophobic material, obviously resulting in the passage of oil and rejection of water with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Regarding Claim 18:
Lynch, as modified, teaches the tube of claim 17, wherein the hydrophobic mesh allows oil to flow through the hydrophobic mesh (see Alghunaimi para. 0070).
Regarding Claim 19:
Lynch, as modified, teaches the tube of claim 17, wherein the hydrophobic mesh blocks water from flowing through the hydrophobic mesh (see Alghunaimi para. 0070).
Regarding Claim 20:
Lynch, as modified, teaches the tube of claim 17, comprising an axis perpendicular to the water surface in a water compartment, wherein the top of the tube is above the water surface, and the bottom of the tube is below the water surface. The location of the tube does not add patentable weigh to the tube. As Lynch, as modified, teaches the tube as claimed this limitation is met.
Regarding Claim 21:
Lynch, as modified, teaches tube of claim 17, wherein the hydrophobic mesh allows a substantial portion of oil to flow through the hydrophobic mesh while rejecting a substantial portion of the water (see Alghunaimi para. 0070).
Regarding Claim 22:
Lynch, as modified, teaches the tube of claim 17, wherein the hydrophobic mesh comprises a stainless- steel mesh with a copper coating that is treated to form a hydrophobic layer (see Alghunaimi para. 0004).
Regarding Claim 23:
Lynch, as modified, teaches the tube of claim 22, wherein the hydrophobic layer comprises a fatty acid (lauric acid) that is functionalized on the copper coating (see Alghunaimi para. 0004).
Claim(s) 5 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lynch (USPN 4,333,835) in view of Alghunaimi et al (US 2021/0062355) as applied to claim 1 above, and further in view of Allouche (US 2008/0105616).
Regarding Claim 5:
Lynch, as modified, teaches the WOSEP of claim 1.
Lynch does not teach an oil-in-water sensor that detects an oil concentration in the water compartment.
Allouche teaches an oil-in-water sensor ( water cut analyzer) that detects an oil concentration in a water compartment of an oil-water separation vessel (see para. 0083).
Lynch, as modified, and Allouche are analogous inventions in the art of oil-water separation. It would have been obvious to one skilled in the art before the effective filing date of the invention to add the sensor (analyzer) of Allouche to the water compartment of Lynch because it allows the level of impurities to be determined(see Allouche para. 0083) and because it is the simple addition of a known sensor to a known device, obviously resulting in a determination of the oil concentration, with an expectation of success. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Regarding Claim 7:
Lynch, as modified, teaches the WOSEP of claim 5, wherein the oil-in-water sensor comprises an ultrasonic detector (see Allouche para. 0083).
Regarding Claim 8:
Lynch, as modified, teaches the WOSEP of claim 1.
Lynch does not teach a phase profile sensor. It is noted that a “phase” profile sensor is interpreted as any sensor that can determine the thickness of the oil layer (see Instant application’s published specification para. 0038).
Allouche teaches a WOSEP comprising a phase profile sensor (oil layer thickness gauge) (see para. 0098).
Lynch, as modified, and Allouche are analogous inventions in the art of oil-water separation. It would have been obvious to one skilled in the art before the effective filing date of the invention to add the phase profile sensor of Allouche to the WOSEP of Lynch because it is the simple addition of a known sensor to a known device, obviously resulting in a determination of the oil level, with an expectation of success. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Regarding Claim 9:
Lynch, as modified, teaches the WOSEP of claim 5.
Allouche further teaches a valve (water control valve) configured to activate when the oil-in-water sensor detects a targeted amount of oil in the water (see para. 0088).
It would have further been obvious to add the water control valve of Allouche to the water outlet of Lynch because control of the water outlet ensures that impurity level in the oil can be controlled (see Allouche para. 0088). And because it is the simple addition of a known control valve to a known outlet, obviously resulting in control of the water outlet with an expectation of success. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lynch (USPN 4,333,835) in view of Alghunaimi et al (US 2021/0062355) and Allouche (US 2008/0105616) as applied to claim 1 above, and further in view of Yin et al (US 2017/0174530).
Regarding Claim 6:
Lynch, as modified, teaches the WOSEP of claim 5.
The combination does not teach the oil-in-water sensor comprises an optical detector, an ultraviolet/visible fluorescence spectrometer, or an infrared spectrometer, or a combination thereof.
Yin teaches a WOSEP wherein the oil-in-water sensor comprises an optical detector (optical sensor) (see para. 0040), an ultraviolet/visible fluorescence spectrometer, or an infrared spectrometer, or a combination thereof.
Lynch, as modified, and Yin are analogous inventions in the art of oil water separators. It would have been obvious to one skilled in the art before the effective filing date of the invention to replace the sensor of Lynch, as modified by Allouche, with the optical detector of Yin because it is the simple substitution of one oil concentration sensor with another known oil concentration sensor, obviously resulting in the detection of oil, with an expectation of success. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lynch (USPN 4,333,835) in view of Alghunaimi et al (US 2021/0062355) as applied to claim 1 above, and further in view of Dan et al (CN 106115966, English Machine translation provided).
Regarding Claim 10:
Lynch, as modified, teaches the WOESP of claim 1.
Lynch does not teach a steam inlet coupled to the outlet at the bottom of the tube.
Dan teaches a steam inlet (an inlet is inherent as steam is used to backwash the filter) connected to an outlet of an oil separation filter (see pg. 3, 2nd and 3rd paragraphs).
Lynch, as modified, and Dan are analogous inventions in the art of oil-water separators. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to add the steam inlet of Dan connected to the outlet at the bottom of the bottom of the tube of Lynch, because it allows the filter (tube) to be backwashed (see Dan pg. 3, 2nd and 3rd paragraphs). And because it is the simple addition of a known inlet to a known filter, obviously resulting in backwashing abilities, with an expectation of success. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Claim(s) 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alghunaimi et al (US 2023/0183094, hereafter referred to as ‘094) in view of Lynch (USPN 4,333,835), Alghunaimi et al (USPN 11,078,589) used as an evidentiary reference.
Regarding Claim 11:
‘904 teaches the method for separating an oil-in-water emulsion in a water oil separator vessel (WOSEP), comprising: flowing the oil-in-water emulsion into a separation compartment (separation compartment 14) of the WOSEP (see para. 0022); performing a gravity separation of a portion of the oil from the water in the separation compartment (oil floats and is skimmed off) (see para. 0022); flowing separated water into a water compartment (over the weir, under the baffle and into the surge compartment) (see para. 0022) comprising a mesh (copper-based hydrophobic mesh, hydrophobic material of USPN 11,078,589 is a hydrophobic mesh) (see para. 0028); collecting oily water that flows along the mesh through an outlet (oil agglomerates and is collected and disposed, as there is disposal, there is inherently an outlet) (see para. 0032 and USPN 11,078,589: Abstract); and removing separated water from the water compartment through a water outlet (water exit port 28) (see par. 0027, fig. 3). ‘904 further teaches that the baffle can be hydrophilic or hydrophobic (see para. 0028, 0030).
‘904 does not teach that the hydrophobic mesh is in the form of a tube or the oily water flows through the tube to the outlet.
Lynch teaches a water oil separator vessel comprising a water compartment (separation chamber 159) (see col. 9 lines 25-31, fig. 8) comprising a tube made from a hydrophobic material and (vertical coalescer tubes 72 which are hydrophobic) (see col. 5 lines 48-51, col. 9 lines 25-31) collecting oily water that flows through the tube (oil in droplets accumulate in each tube and float upwardly, therefore the oily water flows through the tube) (see col. 5 lines 56-62) through an outlet (outlet 172) (see col. 10 lines 1-2, fig. 8).
‘904 and Lynch are analogous inventions in the art of oil-water separation. It would have been obvious to one skilled in the art before the effective filing date of the invention to form the hydrophobic mesh of ‘904 into a tube (plurality of tubes), as disclosed by Lynch, because the use of hydrophobic tubes next to each other provides significant surface area that creates excellent separating and coalescing function (see Lynch col. 2 lines 38-43) and it is desirable in ‘904 to improve the separation of oil and water (reduce the oil concentration in the water stream) (see ‘904 para. 0016).
Regarding Claim 12:
‘904, as modified, teaches the method of claim 11, comprising skimming off oil that floats to a surface of the water in the separation compartment (see ‘904 para. 0023).
Regarding Claim 13:
‘904, as modified, teaches the method of claim 11, comprising overflowing water over a water weir and under a water baffle into the water compartment (see ‘904 para. 0022).
Regarding Claim 14:
‘904, as modified, teaches the method of claim 11, comprising manually operating skim nozzles in the water compartment to remove oil that floats to the surface (see ‘904 para. 0023).
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alghunaimi et al (US 2023/0183094, hereafter referred to as ‘094) in view of Lynch (USPN 4,333,835) as applied to claim 11 above, and further in view of Allouche (US 2008/0105616).
Regarding Claim 15:
‘094, as modified, teaches the method of claim 11.
The combination does not teach determining when an oil-in-water concentration reaches a pre-determined threshold; and activating a valve downstream of the outlet.
Allouche teaches a method for separating oil in water comprising determining when an oil-in-water concentration reaches a pre-determined threshold (maximum mater/liquid ratio); and activating a valve downstream of an outlet (regulates the oil control valve) (see para. 0083-0086).
‘094, as modified, an Allouche are analogous inventions in the art of oil and water separation. It would have been obvious to one skilled in the art before the effective filing date of the invention to add the control steps and valve of Allouche to the outlet of ‘094 because it ensures that oil with poor separation is not released for the separator (see Allouche para. 0083).
Regarding Claim 16:
‘094, as modified, teaches the method of claim 15, comprising, while the valve is activated, iterating: determining if the oil-in-water concentration has dropped below the pre-determined threshold (measurements are made at multiple times) (see figs. 5B and 6B); and deactivating the valve downstream of the outlet (the oil control valve is closed) (see para. 0100).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 11/05/2025