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 .
Drawings
The previously objected drawings figures 1a, 4 and 11 are now accepted in the drawing submitted on 07/06/2026. Original drawing Figures 3, 7, 8, 10, 12a, 12b, and 13 filed one 01/16/2024 are accepted. Original drawing Figures 1b, 2, 5, 6, 9, 14, and 15 filed one 09/292023 are accepted.
Response to Amendment
Applicant’s amendments, see page 8, filed 07/06/2026, with respect to Claim Rejections under 35 U.S.C 112 have been fully considered. The 112(b) rejection of claim 16 has been withdrawn.
With respect to applicants’ arguments towards the 101 rejection, Applicant’s arguments have been fully considered but they are moot because the amendment to claim 1 prompts a new ground of rejection. The 101 rejection below has been modified to reflect that amendment to the claims.
The applicant argues that the Koseoglu reference does not use aromatic hydrocarbons or diamodoids to calculate one or more ratios for classifying thermal evolution of the oil sample, which is added in the amended claim 9. Applicant' s arguments with respect to claims 9, 10, 12, 14, 15, 16 and 17 have been considered but are moot because the amendment to the claim 9 prompts a new ground of rejection. The rejection below has been modified to reflect that amendment to the claims; however, still in part relies on the previously applied prior art to Koseoglu. Claim 11 has been cancelled by the applicant, thus the rejection is moot.
The applicant further argues that Koseoglu reference in view of Mennito reference does not use aromatic hydrocarbons or diamodoids to calculate one or more ratios for classifying thermal evolution of the oil sample, which is added in the amended claim 9 which claim 13 is dependent upon. Applicant’s arguments with respect to claim 13 have been considered but are moot because amendment to claim 9 prompts a new ground of rejection. The rejection below has been modified to reflect that amendment to the claims; however, still in part relies on the previously applied prior art to Koseoglu.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
Claims 9-10 and 12-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. Claim 9 recites “establishing one or more parameters for sample analysis”, “assigning molecular formulae to the raw spectrum data of an oil sample", "identifying aromatic hydrocarbons or diamondoids in the sample based on the molecular formulae” and “classifying a thermal evolution of the oil sample”. The courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed via a computer (MPEP 2106.04(a)(2) section Ill). The limitations stated above, as drafted, are processes that, under their broadest reasonable interpretation, cover performance of the limitations in the mind.
The limitation of establishing parameters for sample analysis is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the context of this claim encompasses the user deciding experimental conditions under which to gather information.
Similarly, the limitation of assigning molecular formulae to spectrum data of an oil sample is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the context of this claim encompasses the user manually determining molecular formulae which corresponds to spectrum peaks from a data table.
Similarly, the limitation of identifying aromatic hydrocarbons/diamondoids in a sample based on molecular formulae is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the context of this claim encompasses recognizing known compositions based on collected data.
Similarly, the limitation of classifying a thermal evolution of the oil sample is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the context of this claim encompasses the user manually determining thermal evolution of an oil sample which corresponds to ratios of aromatic hydrocarbons from a data table.
Accordingly, since the steps above are evaluations and/or observations that can be done mentally, they fall within the “Mental Processes” grouping of abstract ideas. Thus, claim 9 recites an abstract idea.
Further, this judicial exception is not integrated into a practical application. The claim recites “generating spectra”, “recalibrating the spectrum data”, and “identifying” steps. The courts have indicated that gathering and analyzing information using conventional techniques and displaying the result is not sufficient to show an improvement to technology. MPEP 2106.05(a)(II) (discussing TLI Communications LLC V. AV Auto., LLC, 823 F.3d 607, 612-13 (Fed. Cir. 2016)). The steps within the claim are merely recite broad data gathering steps which do not impart any significance to the abstract idea. Hence, the claim is not patent eligible based on the above reasoning and rationale.
Claim 9 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the other elements of the claim other than the abstract idea are not beyond what is well understood, routine and conventional within the prior art, such as “preparing an oil sample” and “using Fourier transform ion cyclotronic resonance mass spectrometry coupled with an atmospheric pressure photoionization source (APPI(+)-FT-ICR MS)”. APPI(+)-FT-ICR MS is well understood, routine and conventional within the prior art as taught by Koseoglu.
Claims 13-17 further define parameters of the APPI technique but without further defining claim 9 beyond that of an abstract idea or integrated into a practical application. That is not considered an inventive concept because no details are provided on how molecular formulae is assigned using the element ranges. These claims are not patent eligible.
Dependent claims 10 and 12-18 are rejected as being dependent on independent claim 9.
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.
Claims 9, 10, 12, 14, 15, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Koseoglu et al. (U.S. Patent No. 20170363602, as previously cited), and further in view of non-patent literature "Evaluation of the effects of the simulated thermal evolution of a Type-I source rock on the distribution of basic nitrogen-containing compounds" by Covas et al.
Regarding Claim 9, Koseoglu teaches a method for detecting aromatic hydrocarbons
including preparing an oil sample for analysis (para 0035), establishing one or more parameters
for sample analysis (paragraph 0059), conducting analysis of the prepared oil sample (para
0054), generating spectra corresponding to the oil sample (para 0030), recalibrating the
spectrum data using at least one homologous series of known oil constituents (para 0077),
assigning molecular formulae to the recalibrated raw spectrum data (para 0035), and identifying aromatic hydrocarbons present in the oil sample based on the assigned molecular formulae (para 0034). For examination purposes, it is interpreted by the examiner that the “spectra” and the “spectrum data” are the same because the spectrum data makes up the spectra and therefore examiner interprets these to be the same. Koseoglu further teaches using Fourier transform ion cyclotronic resonance mass spectrometry coupled with an atmospheric pressure photoionization source (APPI(+)-FTICR MS) to analyze the prepared oil sample (para 0054).
Koseoglu does not teach classifying a thermal evolution of the oil sample based, at least in part, on one or more ratios calculated from the identified aromatic hydrocarbons or diamondoids.
However, Covas teaches the use of Ultrahigh-resolution Fourier transform ion cyclotron resonance mass spectrometry (FT-ICR MS) for molecular level characterization of crude oil samples (pg 1, Abstract). Covas further teaches FT-ICR MS can be coupled with atmospheric photoionization (APPI) (pg 2, Section: Introduction) as well as generating spectra corresponding to the oil sample and assigning molecular formula based on the spectrum (pg 3, Section: Data Processing). Covas teaches classifying a thermal evolution of the oil sample based, at least in part, on one or more ratios calculated from the identified aromatic hydrocarbons or diamondoids (pg 2, Section: Introduction) for the benefit of evaluating the thermal maturity over the full window of oil generation (pg 11, Section: Summary and conclusion). Thus, it would be obvious to one of ordinary skill in the art before the effective filing date to modify Koseoglu with a step of classifying a thermal evolution of the oil sample based, at least in part, on one or more ratios calculated from the identified aromatic hydrocarbons or diamondoids as taught by Covas for the benefit of evaluating the thermal maturity over the full window of oil generation (pg 11, Section: Summary and conclusion).
Regarding Claim 10, Koseoglu in view of Covas teaches the invention in claim 9. Koseoglu further teaches preparing an oil sample by diluting oil in toluene and adding methanol to the oil diluted with toluene to an oil concentration of 500 mg/ml (para 0055).
Regarding Claim 12, Koseoglu in view of Covas teaches the invention in claim 9. Koseoglu further teaches the oil sample is a crude oil sample (para 0054).
Regarding Claim 14, Koseoglu in view of Covas teaches the invention in claim 9. Koseoglu further teaches establishing one or more parameters by setting the Ion source gas temperature 400 °C (para 0065).
Regarding Claim 15, Koseoglu in view of Covas teaches the invention in claim 9. Koseoglu further teaches assigning molecular formulae to the recalibrated raw spectrum data by using the following parameters such as DBE range: 0.0-40.0 (Table 4).
Regarding Claim 16, Koseoglu in view of Covas teaches the invention in claim 9. Koseoglu further teaches assigning molecular formulae to the recalibrated raw spectrum data is accomplished using the following elements Carbon, Hydrogen, Nitrogen,
Oxygen, and Sulfur (para 0034).
Regarding Claim 17, Koseoglu in view of Covas teaches the invention in claim 9. Koseoglu further teaches assigning molecular formulae to the recalibrated raw spectrum data comprises assigning molecular formulae to signals in the spectrum data that have a peak intensity that is at least 3 times higher than a spectrum noise (para 0073).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Koseoglu et al. (U.S. Patent No. 20170363602, as previously cited) and non-patent literature "Evaluation of the effects of the simulated thermal evolution of a Type-I source rock on the distribution of basic nitrogen-containing compounds" by Covas et al. and further in view of Mennito et al. (U.S. Patent No.20130206980, as previously cited)
Regarding claim 13, Koseoglu in view of Covas teaches the invention of claim 9.
Koseoglu in view of Covas does not teach about the resolving power of the APPI(+)-FT-ICR MS being about 800,000.
In the analogous art of oil and petroleum composition analysis, Mennito teaches about the resolving power of the FT-ICR MS being more than 100,000 for the benefit of resolving overlapping masses in the spectrum (para 0054). Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify Koseoglu with the resolving power of the APPI(+)-FT-ICR MS being 800,000 as taught by Mennito for the benefit of better resolution of overlapping masses in the spectrum.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Koseoglu et al. (U.S. Patent No. 20170363602, as previously cited) and non-patent literature "Evaluation of the effects of the simulated thermal evolution of a Type-I source rock on the distribution of basic nitrogen-containing compounds" by Covas et al. and further in view of non-patent literature “Comprehensive Chemical Characterization of Hydrocarbons in NIST Standard Reference Material 2779 Gulf of Mexico Crude Oil” by Worton et al.
Koseoglu in view of Covas teaches the invention of claim 9.
Koseoglu in view of Covas does not teach wherein one or more ratios comprise at least one of a DBE 7 carbon-number ratio corresponding to an alkyl-naphthalene carbon-number window or a DBE 10 carbon-number ratio corresponding to phenanthrene and methylphenanthrene.
However, Worton teaches hydrocarbons characterized from crude oil for research into environmental impacts of oil spills (pg 13130, Section: Abstract). Worton further teaches alkylated naphthene having DBE of 7 and phenanthrenes having a DBE of 10 (pg 13134, Section: Results, para 3) which is utilized by environmental models to better understand chemical evolution of crude oil during weathering processes (pg 13137, Subsection: Environmental Implications). Thus, it would be obvious for one of ordinary skill in the art before the effective filing date to modify Koseoglu in view of Covas with wherein one or more ratios comprise at least one of a DBE 7 carbon-number ratio corresponding to an alkyl-naphthalene carbon-number window or a DBE 10 carbon-number ratio corresponding to phenanthrene and methylphenanthrene as taught by Worton to better understand chemical evolution of crude oil during weathering processes (pg 13137, Subsection: Environmental Implications).
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 HENA BERA whose telephone number is (571)272-9964. The examiner can normally be reached Mon-Fri 8:00-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at (571) 270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/H.R.B./ Examiner, Art Unit 1798
/CHARLES CAPOZZI/ Supervisory Patent Examiner, Art Unit 1798
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