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 .
Detailed Action
This is the Final Action for application 18/489132 response filed 07/23/2026.
Claim Objections
Claim 17 is objected to because of the following informalities:
In Claim 17, “wherein centrifuging,” should read instead “wherein the centrifuging,” since centrifuging was already referred to in Claim 13. As it is clear what applicant intends, and that this is an unintended type as antecedent basis and has been fixed most other instances where antecedent basis could be a problem, this is only objected too, however 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 1-12 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.
With respect to Claim 1, it is unclear in step c) what “a preconcentrated fraction,” is of and in step d) what the “a concentration,” is a concentration of. Is it any concentration of anything? This is not clear from what is claimed.
Claims 2-12 are rejected by virtue of being dependent on Claim 1.
Claim Rejections - 35 USC §103
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 non-obviousness.
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 1 & 8-10 & 19-20 are rejected under 35 U.S.C. 103 as being obvious over WEISS/ BL Technologies in WO 2019/099231 (as cited on IDS dated 02/21/2025) in view of CHIA in US 20110259798 and further in view of GRAHAM in US 20140296566.
With respect to Claim 1, WEISS teaches of method comprising:
(a) providing a crude petroleum oil sample;
(b) spiking the crude petroleum oil sample with a recovery standard to provide a spiked oil sample;
(c) loading the spiked oil sample onto a solid phase extraction (SPE) cartridge;
(d) washing the SPE cartridge with an organic solvent to obtain a washed amine sample ( a pre-concentrated sample); and
(e) eluting the washed amine sample with an acidified solution to achieve an aqueous elution for analysis (to obtain an aqueous elution sample for analysis) (abstract, paragraph 0048).
WEISS more specifically teaches that the method is for removal/extraction of amines, which are nitrogen containing compounds (paragraph 0003, 0014) which are present in petroleum and crude oils pre-refinery (abstract, paragraph 0008, 0010).
WEISS further teaches that the process includes the steps of extraction (where the sample is loaded onto a SPE cartridge and washed with solvent (steps 104 & 106), and a step of separation (where the analyte is then separated from the extraction medium, step 108) (on Figure 1).
WEISS teaches that the SPE cartridge can be pre-conditioned/preconcentration to promote a higher retention/retention concentration of target analytes (paragraph 0038). WEISS further teaches of an analysis step by mass spectrometry or similar analytical methods (paragraph 0030, 0056). WEISS specifically teaches that the SPE is used to give a more concentrated extract(paragraph 0028), so this can read on the instantly claimed pre-concentrating.
Therefore, WEISS teaches of the claimed steps including extracting, separating, preconcentrating, and analyzing of a petroleum sample. WEISS merely teach of a change in sequence of when the aqueous fraction is separated from the rest of the sample (in the instant claims the separating is done before the preconcentrating through SPE, and in WEISS it is done after pre-concentrating through SPE), however it is noted that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04 IV. C. & In reBurhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946).
WEISS does not teach of the method extracting acids present in petroleum--- though it is noted that this is only in the preamble of the claim and not the claim body, so is not limiting for the claimed method steps (which neither is the nitrogen). However, if analyzing nitrogen or acidic compounds from petroleums is not clear to one of ordinary skill, CHIA is used to remedy this.
CHIA teaches of a method of extracting, detecting, and reducing the concentration of acids in hydrocarbonaceous mixtures in crude oils(petroleums) (abstract, paragraph 0004-0005). The method uses solid phase extraction to elute out the carboxylic acids and other acids (paragraph 0014). CHIA teaches that the acids are in the aqueous phase/solution(paragraph 0016, 0015, 0021, 0023). CHIA further teaches that the acids can be quantified/analyzed by ion exclusion chromatography (paragraphs 0017-0018).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to extract and measure and reduce acidic compounds in petroleum or crude oil compounds specifically in the aqueous phase as is done in CHIA in the method of WEISS due to the negative effect their corrosivity has on conduits and storage tanks in which the oil or petroleum product is held and the need in the art to reduce these compounds and their affects and due to the advantage extraction/separation of acidic compounds in aqueous phase/solution has a being a preferred methods since prevalent acids including carboxylic acids are water soluble in hydrocarbonaceous mixures (CHIA, paragraph 0016, 0021, 0023, 0002, 0005-0006).
WEISS and CHIA teach of the above, and WEIS further teaches that the SPE cartridge can be pre-conditioned to promote a higher retention/retention concentration of target analytes which includes rinsing the SPE cartridge with 2 cartridge volumes of toluene(paragraph 0038). CHIA also teaches of pre-conditioning (paragraph 0014). In case its not clear that WEISS and CHIA teach of what applicant considers pre-concentrating , which according to instant Claim 8 is by running the sample/fraction through 3 pre-conditioning solid phase extraction cartridges as shown in instant Claim 8, GRAHAM is used to remedy this.
GRAHAM teaches of using solid phase extraction to isolate analytes or products of (paragraph 0170). GRAHAM further teaches that the SPE cartridges can be weak anion exchange, cation exchange, C18, or polymer variants thereof (paragraph 0170). GRAHAM further teaches of using 4 cartridges which reads on the instantly claimed 3 (paragraph 0075-0094, 0199, 0028) and that the cartridges are pre-conditioned (paragraph 0199, 0201, 0204).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use multiple SPE cartridges as is done in GRAHAM in the methods of WEISS and CHIA due to the advantage that using different and multiple types of SPE offer in giving necessary separation of desired components (GRAHAM, paragraph 0009).
With respect to Claim 8, WEISS teaches of method comprising:
(a) providing a crude petroleum oil sample;
(b) spiking the crude petroleum oil sample with a recovery standard to provide a spiked oil sample;
(c) loading the spiked oil sample onto a solid phase extraction (SPE) cartridge;
(d) washing the SPE cartridge with an organic solvent to obtain a washed amine sample; and
(e) eluting the washed amine sample with an acidified solution to achieve an aqueous elution for analysis (abstract, paragraph 0048).
WEISS more specifically teaches that the method is for removal/extraction of amines, which are nitrogen containing compounds (paragraph 0003, 0014) which are present in petroleum and crude oils pre-refinery (abstract, paragraph 0008, 0010).
WEISS further teaches that the process includes the steps of extraction (where the sample is loaded onto a SPE cartridge and washed with solvent (steps 104 & 106), and a step of separation (where the analyte is then separated from the extraction medium, step 108) (on Figure 1). WEISS teaches that the SPE cartridge can be pre-conditioned/preconcentration to promote a higher retention/retention concentration of target analytes (paragraph 0038). WEISS then teaches of an analysis step by mass spectrometry or similar analytical methods (paragraph 0030, 0056).
WEISS does not teach of the method extracting acids present in petroleum--- though it is noted that this is only in the preamble of the claim and not the claim body, so is not limiting for the claimed method steps (which neither is the nitrogen).
CHIA is used to remedy this and teaches of a method of detecting a reducing the concentration of acids in hydrocarbonaceous mixtures in crude oils (abstract, paragraph 0004-0005). The method uses solid phase extraction to elute out the acids (paragraph 0014). CHIA further teaches that the acids can be quantified/analyzed by ion exclusion chromatography (paragraphs 0017-0018).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to extract and measure and reduce acidic compounds in petroleum or crude oil compounds as is done in CHIA in the method of WEISS due to the negative effect their corrosivity has on conduits and storage tanks in which the oil or petroleum product is held and the need in the art to reduce these compounds and their affects (CHIA, paragraph 0002, 0005-0006).
WEISS and CHIA teach of the above, and WEIS further teaches that the SPE cartridge can be pre-conditioned to promote a higher retention/retention concentration of target analytes which includes rinsing the SPE cartridge with 2 cartridge volumes of toluene(paragraph 0038). CHIA also teaches of pre-conditioning (paragraph 0014). WEISS and CHIA do not teach of 3 pre-conditioning cartridges or rinses as instantly claimed.
GRAHAM is used to remedy this and teaches of using solid phase extraction to isolate analytes or products of (paragraph 0170). GRAHAM further teaches that the SPE cartridges can be weak anion exchange, cation exchange, C18, or polymer variants thereof (paragraph 0170). GRAHAM further teaches of using 4 cartridges which reads on the instantly claimed 3 (paragraph 0075-0094, 0199, 0028).
It would have been obvious to one of ordinary skill in the art to use multiple SPE cartridges as is done in GRAHAM in the methods of WEISS and CHIA due to the advantage that using different and multiple types of SPE offer in giving necessary separation of desired components (GRAHAM, paragraph 0009).
With respect to Claim 9, WEISS teaches that the SPE cartridge can be pre-conditioned to promote a higher retention/retention concentration of target analytes which includes rinsing the SPE cartidge with 2 cartridge volumes of toluene(paragraph 0038). WEISS further teaches that the cartridge can be a cation exchange cartridge (paragraph 0017, 0039). CHIA also teaches of pre-conditioning (paragraph 0014). WEISS and CHIA do not teach of 3 pre-conditioning cartridges or rinses as instantly claimed where there is a polymeric cation exchanger, a weak anion exchanger, and a C18 resin column.
GRAHAM is used to remedy this and teaches of using solid phase extraction to isolate analytes or products of (paragraph 0170). GRAHAM further teaches that the SPE cartridges can be weak anion exchange, cation exchange, C18, or polymer variants thereof (paragraph 0170). GRAHAM further teaches of using 4 cartridges which reads on the instantly claimed 3 (paragraph 0075-0094, 0199, 0028).
It would have been obvious to one of ordinary skill in the art to use multiple SPE cartridges as is done in GRAHAM in the methods of WEISS and CHIA due to the advantage that using different and multiple types of SPE offer in giving necessary separation of desired components (GRAHAM, paragraph 0009).
With respect to Claim 10, see claim 1 rejection. WEISS teaches that the SPE cartridge can be pre-conditioned to promote a higher retention/retention concentration of target analytes which includes rinsing the SPE cartidge with 2 cartridge volumes of toluene(paragraph 0038). WEISS further teaches that the cartridge can be a cation exchange cartridge (paragraph 0017, 0039). CHIA also teaches of pre-conditioning (paragraph 0014). WEISS and CHIA do not teach of 3 pre-conditioning cartridges or rinses as instantly claimed where there is a polymeric cation exchanger, a weak anion exchanger, and a C18 resin column.
WEISS and CHIA teach of the above, and WEIS further teaches that the SPE cartridge can be pre-conditioned to promote a higher retention/retention concentration of target analytes which includes rinsing the SPE cartridge with 2 cartridge volumes of toluene(paragraph 0038). CHIA also teaches of pre-conditioning (paragraph 0014). WEISS and CHIA do not teach of 3 pre-conditioning cartridges or rinses as instantly claimed.
GRAHAM is used to remedy this and teaches of using solid phase extraction to isolate analytes or products of (paragraph 0170). GRAHAM further teaches that the SPE cartridges can be weak anion exchange, cation exchange, C18, or polymer variants thereof (paragraph 0170). GRAHAM further teaches of using 4 cartridges which reads on the instantly claimed 3 (paragraph 0075-0094, 0199, 0028).
Further--- the instant claim requires that the fraction passes through the cartridges together or individually. This encompasses all options possible in which a sample can pass through a cartridge. Therefore, GRAHAM is considered to teach this as shown above.
It would have been obvious to one of ordinary skill in the art to use multiple SPE cartridges as is done in GRAHAM in the methods of WEISS and CHIA due to the advantage that using different and multiple types of SPE offer in giving necessary separation of desired components (GRAHAM, paragraph 0009).
With respect to Claim 19, WEISS teaches of method comprising:
(a) providing a crude petroleum oil sample;
(b) spiking the crude petroleum oil sample with a recovery standard to provide a spiked oil sample;
(c) loading the spiked oil sample onto a solid phase extraction (SPE) cartridge;
(d) washing the SPE cartridge with an organic solvent to obtain a washed amine sample ( a pre-concentrated sample); and
(e) eluting the washed amine sample with an acidified solution to achieve an aqueous elution for analysis (to obtain an aqueous elution sample for analysis) (abstract, paragraph 0048).
WEISS more specifically teaches that the method is for removal/extraction of amines, which are nitrogen containing compounds (paragraph 0003, 0014) which are present in petroleum and crude oils pre-refinery (abstract, paragraph 0008, 0010).
WEISS further teaches that the process includes the steps of extraction (where the sample is loaded onto a SPE cartridge and washed with solvent (steps 104 & 106), and a step of separation (where the analyte is then separated from the extraction medium, step 108) (on Figure 1).
WEISS teaches that the SPE cartridge can be pre-conditioned/preconcentration to promote a higher retention/retention concentration of target analytes (paragraph 0038). WEISS further teaches of an analysis step by mass spectrometry or similar analytical methods (paragraph 0030, 0056). WEISS specifically teaches that the SPE is used to give a more concentrated extract(paragraph 0028), so this can read on the instantly claimed pre-concentrating.
Therefore, WEISS teaches of the claimed steps including extracting, separating, preconcentrating, and analyzing of a petroleum sample. WEISS merely teach of a change in sequence of when the aqueous fraction is separated from the rest of the sample (in the instant claims the separating is done before the preconcentrating through SPE, and in WEISS it is done after pre-concentrating through SPE), however it is noted that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04 IV. C. & In reBurhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946).
WEISS does not teach of the method extracting acids present in petroleum--- though it is noted that this is only in the preamble of the claim and not the claim body, so is not limiting for the claimed method steps (which neither is the nitrogen). However, if analyzing nitrogen or acidic compounds from petroleums is not clear to one of ordinary skill, CHIA is used to remedy this.
CHIA teaches of a method of extracting, detecting, and reducing the concentration of acids in hydrocarbonaceous mixtures in crude oils(petroleums) (abstract, paragraph 0004-0005). The method uses solid phase extraction to elute out the carboxylic acids and other acids (paragraph 0014). CHIA teaches that the acids are in the aqueous phase/solution(paragraph 0016, 0015, 0021, 0023). CHIA further teaches that the acids can be quantified/analyzed by ion exclusion chromatography (paragraphs 0017-0018).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to extract and measure and reduce acidic compounds in petroleum or crude oil compounds specifically in the aqueous phase as is done in CHIA in the method of WEISS due to the negative effect their corrosivity has on conduits and storage tanks in which the oil or petroleum product is held and the need in the art to reduce these compounds and their affects and due to the advantage extraction/separation of acidic compounds in aqueous phase/solution has a being a preferred methods since prevalent acids including carboxylic acids are water soluble in hydrocarbonaceous mixures (CHIA, paragraph 0016, 0021, 0023, 0002, 0005-0006).
WEISS and CHIA teach of the above, and WEIS further teaches that the SPE cartridge can be pre-conditioned to promote a higher retention/retention concentration of target analytes which includes rinsing the SPE cartridge with 2 cartridge volumes of toluene(paragraph 0038). CHIA also teaches of pre-conditioning (paragraph 0014). In case its not clear that WEISS and CHIA teach of what applicant considers pre-concentrating , which according to instant Claim 8 is by running the sample/fraction through 3 pre-conditioning solid phase extraction cartridges as shown in instant Claim 8, GRAHAM is used to remedy this.
GRAHAM teaches of using solid phase extraction to isolate analytes or products of (paragraph 0170). GRAHAM further teaches that the SPE cartridges can be weak anion exchange, cation exchange, C18, or polymer variants thereof (paragraph 0170). GRAHAM further teaches of using 4 cartridges which reads on the instantly claimed 3 (paragraph 0075-0094, 0199, 0028) and that the cartridges are pre-conditioned (paragraph 0199, 0201, 0204).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use multiple SPE cartridges as is done in GRAHAM in the methods of WEISS and CHIA due to the advantage that using different and multiple types of SPE offer in giving necessary separation of desired components (GRAHAM, paragraph 0009).
With respect to Claim 20, WEISS teaches of quantifying the eluates by ion chromatography, mass spectrometry, nuclear magnetic resonance, surface enhanced Raman scattering, ultra-violet spectrophotometry, fluorescence, conductivity, and combinations thereof (paragraph 0043). CHIA teaches of using ion exclusion chromatography (paragraphs 0017-0018). GRAHAM teaches of multiple SPE extractions.
Claims 3-6 & 13, 16-18 are rejected under 35 U.S.C. 103 as being obvious over WEISS/ BL Technologies in WO 2019/099231 (as cited on IDS dated 02/21/2025) in view of CHIA in US 20110259798 in view of GRAHAM in US 20140296566 and further into KOCZO in US 20070299143.
With respect to Claim 3, WEISS teaches of the above for Claim 1, but does not teach of heating the petroleum or of constant stirring with the claimed rpm and oil/water ratio.
WEISS and CHIA and GRAHAM teach of the above for Claim 1, but does not teach of heating the petroleum.
KOCZO is used to remedy this. KOCZO teaches using petroleum or gasoline oils (paragraph 0018), and of separating/extracting components in oil compounds (paragraph 0002, abstract), and specifically of heating to 75 degrees Celsius (paragraph 0063, 0058), which falls in the claimed range of 65 degrees Celsius plus or minus 10 degrees.
KOCZO further teaches of stirring under a constant 500 rpm (paragraph 0069, 0065), and of the water oil being 70 % /30% oil to water (paragraph 0131-0132).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to heat and process the sample/ mixture as is done in KOCZO in the methods of WEISS and CHIA due to the advantage that heat and these processing methods have for causing an exotherm/a release/change in energy/separation of products including oil in water separation (KOCZO, paragraph 0099, 0069).
Further—the examiner notes that adjusting the temperature, oil/water concentration and rpm and stirring time, would be obvious to one of ordinary skill through routine experimentation. See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
“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." See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
With respect to Claim 4, WEISS teaches of the acidified solution being at a pH of 1-6 (paragraph 0043) for extraction of the amine/nitrogenous compounds. This reads on “the pH of the medium is below 5.0 for extraction of nitrogenous compounds or above 11.0 for extraction of acidic compounds,” as claimed through broadest reasonable interpretation. CHIA teaches of the pH needing to be above pH of 9 for acidic compounds, which also reads on the claimed pH of “above 11,” (paragraph 0016, 0021).
With respect to Claim 5, WEISS teaches of the above for Claim 1, but does not teach of centrifuging at 9,500 rpm for 180 min with 2mg of demulsifier per 100 ml.
KOCZO is used to remedy this. KOCZO teaches using petroleum or gasoline oils (paragraph 0018), and of separating/extracting components in oil compounds (paragraph 0002, abstract), and further KOCZO further teaches of stirring under a centrifuging at 4000 rpm and of using demulsifiers while doing this (paragraph 0114-0115), and of the water oil being 70 % /30% oil to water (paragraph 0131-0132).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to process the sample/ mixture as is done in KOCZO in the methods of WEISS and CHIA due to the advantage that heat and these processing methods have for causing an exotherm/a release/change in energy/separation of products including oil in water separation and due to the advantage this would offer for studying phase separation (KOCZO, paragraph 0099, 0069, 0112-0115).
Further—the examiner notes that adjusting the concentration of components used and rpm for centrifugation and time, would be obvious to one of ordinary skill through routine experimentation. See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to Claim 6, WEISS teaches of the above for Claim, but does not teach of the demulsifier.
CHIA teaches of adding demulsifiers to the sample to improve separation and using ones which are commercially available (paragraph 0016, 0021, 0021).
CHIA and WEISS teaches of the above, but does not teach of the demulsifier being “based on,” ethylene/propylene oxide copolymers.
KOCZO teaches of using a demulsifier and specifically of using propylene based demulsifiers (paragraph 0056).
It would have been obvious to one of ordinary skill in the art to use the demulsifiers which are used in KOCZO in the methods of WEISS and CHIA since there is a need in the art for demulsifiers capable or breaking emulsions effectively (KOCZO, paragraph 0007).
With respect to Claim 13, WEISS teaches of method comprising:
(a) providing a crude petroleum oil sample;
(b) spiking the crude petroleum oil sample with a recovery standard to provide a spiked oil sample;
(c) loading the spiked oil sample onto a solid phase extraction (SPE) cartridge;
(d) washing the SPE cartridge with an organic solvent to obtain a washed amine sample ( a pre-concentrated sample); and
(e) eluting the washed amine sample with an acidified solution to achieve an aqueous elution for analysis (to obtain an aqueous elution sample for analysis) (abstract, paragraph 0048).
WEISS more specifically teaches that the method is for removal/extraction of amines, which are nitrogen containing compounds (paragraph 0003, 0014) which are present in petroleum and crude oils pre-refinery (abstract, paragraph 0008, 0010).
WEISS further teaches that the process includes the steps of extraction (where the sample is loaded onto a SPE cartridge and washed with solvent (steps 104 & 106), and a step of separation (where the analyte is then separated from the extraction medium, step 108) (on Figure 1).
WEISS teaches that the SPE cartridge can be pre-conditioned/preconcentration to promote a higher retention/retention concentration of target analytes (paragraph 0038). WEISS further teaches of an analysis step by mass spectrometry or similar analytical methods (paragraph 0030, 0056). WEISS specifically teaches that the SPE is used to give a more concentrated extract(paragraph 0028), so this can read on the instantly claimed pre-concentrating.
Therefore, WEISS teaches of the claimed steps including extracting, separating, preconcentrating, and analyzing of a petroleum sample. WEISS merely teach of a change in sequence of when the aqueous fraction is separated from the rest of the sample (in the instant claims the separating is done before the preconcentrating through SPE, and in WEISS it is done after pre-concentrating through SPE), however it is noted that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04 IV. C. & In reBurhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946).
WEISS does not teach of the method extracting acids present in petroleum--- though it is noted that this is only in the preamble of the claim and not the claim body, so is not limiting for the claimed method steps (which neither is the nitrogen). However, if analyzing nitrogen or acidic compounds from petroleums is not clear to one of ordinary skill, CHIA is used to remedy this.
CHIA teaches of a method of extracting, detecting, and reducing the concentration of acids in hydrocarbonaceous mixtures in crude oils(petroleums) (abstract, paragraph 0004-0005). The method uses solid phase extraction to elute out the carboxylic acids and other acids (paragraph 0014). CHIA teaches that the acids are in the aqueous phase/solution(paragraph 0016, 0015, 0021, 0023). CHIA further teaches that the acids can be quantified/analyzed by ion exclusion chromatography (paragraphs 0017-0018).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to extract and measure and reduce acidic compounds in petroleum or crude oil compounds specifically in the aqueous phase as is done in CHIA in the method of WEISS due to the negative effect their corrosivity has on conduits and storage tanks in which the oil or petroleum product is held and the need in the art to reduce these compounds and their affects and due to the advantage extraction/separation of acidic compounds in aqueous phase/solution has a being a preferred methods since prevalent acids including carboxylic acids are water soluble in hydrocarbonaceous mixures (CHIA, paragraph 0016, 0021, 0023, 0002, 0005-0006).
WEISS and CHIA teach of the above, and WEIS further teaches that the SPE cartridge can be pre-conditioned to promote a higher retention/retention concentration of target analytes which includes rinsing the SPE cartridge with 2 cartridge volumes of toluene(paragraph 0038). CHIA also teaches of pre-conditioning (paragraph 0014). In case its not clear that WEISS and CHIA teach of what applicant considers pre-concentrating , which according to instant Claim 8 is by running the sample/fraction through 3 pre-conditioning solid phase extraction cartridges as shown in instant Claim 8, GRAHAM is used to remedy this.
GRAHAM teaches of using solid phase extraction to isolate analytes or products of (paragraph 0170). GRAHAM further teaches that the SPE cartridges can be weak anion exchange, cation exchange, C18, or polymer variants thereof (paragraph 0170). GRAHAM further teaches of using 4 cartridges which reads on the instantly claimed 3 (paragraph 0075-0094, 0199, 0028) and that the cartridges are pre-conditioned (paragraph 0199, 0201, 0204).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use multiple SPE cartridges as is done in GRAHAM in the methods of WEISS and CHIA due to the advantage that using different and multiple types of SPE offer in giving necessary separation of desired components (GRAHAM, paragraph 0009).
WEISS and CHIA and GRAHAM do not teach of the claimed centrifuging. KOCZO is used to remedy this and teaches of methods of separating and then analyzing oil in water emulsions (abstract). KOCZO more specifically teaches of centrifugation and then determination of what is in water/aqueous cut (paragraphs 0114-0115).
WEISS teaches of the acidified solution being at a pH of 1-6 (paragraph 0043) for extraction of the amine/nitrogenous compounds. This reads on “the pH of the medium is below 5.0 for extraction of nitrogenous compounds or above 11.0 for extraction of acidic compounds,” as claimed through broadest reasonable interpretation. CHIA teaches of the pH needing to be above pH of 9 for acidic compounds, which also reads on the claimed pH of “above 11,” (paragraph 0016, 0021).
KOCZO further teaches of stirring under a constant 500 rpm (paragraph 0069, 0065), and of the water oil being 70 % /30% oil to water (paragraph 0131-0132).
Further—the examiner notes that adjusting the temperature, oil/water concentration and rpm and stirring time, would be obvious to one of ordinary skill through routine experimentation. See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
“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." See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to separate the oil and water components as is done in KOCZO by centrifugation in the methods of WEISS, CHIA, and GRAHAM due to the advantage this allows for separation of oil and water phases and therefore separate analysis (KOCZO, paragraphs 0114-0115).
With respect to Claim 16, WEISS teaches of quantifying the eluates by ion chromatography, mass spectrometry, nuclear magnetic resonance, surface enhanced Raman scattering, ultra-violet spectrophotometry, fluorescence, conductivity, and combinations thereof (paragraph 0043). CHIA teaches of using ion exclusion chromatography (paragraphs 0017-0018). GRAHAM teaches of multiple SPE extractions.
With respect to Claim 17, WEISS teaches of the above for Claim 1, but does not teach of centrifuging at 9,500 rpm for 180 min with 2mg of demulsifier per 100 ml.
KOCZO is used to remedy this. KOCZO teaches using petroleum or gasoline oils (paragraph 0018), and of separating/extracting components in oil compounds (paragraph 0002, abstract), and further KOCZO further teaches of stirring under a centrifuging at 4000 rpm and of using demulsifiers while doing this (paragraph 0114-0115), and of the water oil being 70 % /30% oil to water (paragraph 0131-0132).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to process the sample/ mixture as is done in KOCZO in the methods of WEISS and CHIA due to the advantage that heat and these processing methods have for causing an exotherm/a release/change in energy/separation of products including oil in water separation and due to the advantage this would offer for studying phase separation (KOCZO, paragraph 0099, 0069, 0112-0115).
Further—the examiner notes that adjusting the concentration of components used and rpm for centrifugation and time, would be obvious to one of ordinary skill through routine experimentation. See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to Claim 18, WEISS teaches of the above for Claim 1, but does not teach of heating the petroleum or of constant stirring with the claimed rpm and oil/water ratio.
WEISS and CHIA and GRAHAM teach of the above for Claim 1, but does not teach of heating the petroleum.
KOCZO is used to remedy this. KOCZO teaches using petroleum or gasoline oils (paragraph 0018), and of separating/extracting components in oil compounds (paragraph 0002, abstract), and specifically of heating to 75 degrees Celsius (paragraph 0063, 0058), which falls in the claimed range of 65 degrees Celsius plus or minus 10 degrees.
KOCZO further teaches of stirring under a constant 500 rpm (paragraph 0069, 0065), and of the water oil being 70 % /30% oil to water (paragraph 0131-0132).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to heat and process the sample/ mixture as is done in KOCZO in the methods of WEISS and CHIA due to the advantage that heat and these processing methods have for causing an exotherm/a release/change in energy/separation of products including oil in water separation (KOCZO, paragraph 0099, 0069).
Further—the examiner notes that adjusting the temperature, oil/water concentration and rpm and stirring time, would be obvious to one of ordinary skill through routine experimentation. See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
“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." See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).”
Claim 7 is rejected under 35 U.S.C. 103 as being obvious over WEISS/ BL Technologies in WO 2019/099231 (as cited on IDS dated 02/21/2025) in view of CHIA in US 20110259798 in view of GRAHAM in US 20140296566 and further into KOCZO in US 20070299143 and further in view of LUONG in US 20160299118.
With respect to Claim 7, WEISS and CHIA and GRAHAMAN AND KOCZO teach of the samples being separated as shown above, but do not teach of collection in a separation funnel.
LUONG is used to remedy this and teaches that field sample can have a distinct water an oil phase and that they can be separated by a separation funnel (paragraph 0031).
It would have been obvious to one of ordinary skill in the art to separate the phases as is done in LUONG in the methods of WEISS and CHIA due to the advantage this has in providing liquid-liquid extraction (LUONG, paragraph 0031).
Claims 2, 11-12 are rejected under 35 U.S.C. 103 as being obvious over WEISS/ BL Technologies in WO 2019/099231 (as cited on IDS dated 02/21/2025) in view of CHIA in US 20110259798 further in view of GRAHAM in US 20140296566 and further in view of XU in US 20160145511.
With respect to Claim 2, WEISS and CHIA and GRAHAM teach of the above for Claim 1 but does not teach of heating the petroleum to create a thermal degradation product.
XU is used to remedy this and teaches of methods of using thermal treatment to degrade and themally decompose amine (nitrogen) containing compositions (abstract). XU teaches further of extracting the nitrogen compounds (paragraph 0098,0086).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to control decomposition by thermal means as is done in XU in the methods of WEISS and CHIA and GRAHAM due the advantage this has for controlling breakdown and processing of components (XU, paragraph 0098).
With respect to Claim 11-12, WEISS teaches of quantifying the eluates by ion chromatography, mass spectrometry, nuclear magnetic resonance, surface enhanced Raman scattering, ultra-violet spectrophotometry, fluorescence, conductivity, and combinations thereof (paragraph 0043). CHIA teaches of using ion exclusion chromatography (paragraphs 0017-0018). GRAHAM teaches of multiple SPE extractions.
Neither WEISS or CHIA or GRAHAM teach of GC-MS, ion exchange chromatography couple with conductivity detection, or spectroscopy in the infrared region (FTIR) by attenuated reflectance for analysis/detection.
XU is used to remedy this and teach of methods for hydroprocessing a feed and for removing things such as nitrogen from it (abstract). XU teaches further of extracting the nitrogen compounds (paragraph 0084) and of analyzing the composition of the feed or extracts by GC-MS (paragraph 0133), or by FTIR (paragraph 0094).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to analyze the compounds separated as is done in XU in the methods of WEISS and CHIA and GRAHAM due to the fact that different methods such as FTIR and nuclear magnetic resonance provide different advantages for compounds of different compositions (XU, paragraph 0094).
With respect to Claim 11, WEISS teaches of quantifying the eluates by ion chromatography/by cation exchange (paragraph 0053), mass spectrometry, nuclear magnetic resonance, surface enhanced Raman scattering, ultra-violet spectrophotometry, fluorescence, conductivity, and combinations thereof (paragraph 0043). CHIA teaches of using ion exclusion chromatography (paragraphs 0017-0018).
Neither WEISS or CHIA or GRAHAM teach of GC-MS, ion exchange chromatography couple with conductivity detection, or spectroscopy in the infrared region (FTIR) by attenuated reflectance.
XU is used to remedy this and teach of methods for hydroprocessing a feed and for removing things such as nitrogen from it (abstract). XU teaches further of extracting the nitrogen compounds (paragraph 0084) and of analyzing the composition of the feed or extracts by GC-MS (paragraph 0133), or by FTIR (paragraph 0094).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to analyze the compounds separated as is done in XU in the methods of WEISS and CHIA and GRAHAM due to the fact that different methods such as FTIR and nuclear magnetic resonance provide different advantages for compounds of different compositions (XU, paragraph 0094).
Allowable Subject Matter
Claims 14-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 14 and 15 are dependent on Claim 13, which is rejected as shown above by a combination of WEISS/ BL Technologies in WO 2019/099231 (as cited on IDS dated 02/21/2025) in view of CHIA in US 20110259798 in view of GRAHAM in US 20140296566 and further into KOCZO in US 20070299143. Even this combination of prior art does not teach of the limitations in Claims 14 or 15 including before step a heating to a temperature of 350 degree Celsius in a pressure vessel, nor of adding a hydrogen sulfide scavenging products, therefore if these limitations are included in the independent claim without deletion of other subject matter- then would be considered allowable
Response to Arguments
Applicant's arguments filed 07/23/2026 have been fully considered but they are not persuasive.
The prior 112b rejections have been overcome due to amendments made 07/23/2026, however some remain due to the amendments as shown in the above rejection.
Applicant argues that the instant prior art does not teach of the claimed preconcentrating of the aqueous fraction as instantly claimed and that pre-concentrating is different from pre-conditioning. With respect to this, applicant should see their instant Claim 8, which indicates that the pre-concentrating can in fact be running samples through pre-conditioned SPE, which is done as shown in the above rejection.
Applicant further emphasizes that the aqueous fraction is not treated this way.
WEISS teaches that the SPE cartridge can be pre-conditioned/preconcentration to promote a higher retention/retention concentration of target analytes (paragraph 0038). WEISS further teaches of an analysis step by mass spectrometry or similar analytical methods (paragraph 0030, 0056). WEISS specifically teaches that the SPE is used to give a more concentrated extract(paragraph 0028), so this can read on the instantly claimed pre-concentrating. WEISS further teaches that the analysis is performed for aqueous analysis (aqueous phase).
Therefore, WEISS teaches of the claimed steps including extracting, separating, preconcentrating, and analyzing of a petroleum sample. WEISS merely teach of a change in sequence of when the aqueous fraction is separated from the rest of the sample (in the instant claims the separating is done before the preconcentrating through SPE, and in WEISS it is done after pre-concentrating through SPE), however it is noted that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. See MPEP 2144.04 IV. C. & In reBurhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Therefore, this makes the instant claims obvious.
Applicant further argues that WEISS teaches away from liquid extraction, and that claim 1 now reciting an “aqueous fraction,” means that WEISS is not applicable. The examiner disagrees and notes that WEISS specifically teaches of aqueous analysis and elution as well(paragraph 0048 and Figure 2).
Further, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant makes no substantive arguments about the other pieces of 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 REBECCA M FRITCHMAN whose telephone number is (303)297-4344. The examiner can normally be reached 9:30-4:30 MT Monday-Friday.
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, Maris Kessel, can be reached on 571-270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA M FRITCHMAN/Primary Examiner, Art Unit 1758
