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 .
Election/Restrictions
Applicant’s election without traverse of Group 1, Claims 1-7, in the reply filed on 15 June 2026 is acknowledged.
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 15 June 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6 November 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
The information disclosure statement (IDS) submitted on 22 May 2026 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation at least 90 wt.%, and the claim also recites at least 95 wt.%, at least 99 wt.%, at least 99.5 wt%, or even at least 99.9 wt.% which is the narrower statement of the range/limitation. The claims is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Bakeev et al. (US 6,281,274, hereinafter referred to a “Bakeev”).
As to Claim 1: Bakeev teaches a composition comprising hydrocarbon and a copolymer of vinyl caprolactam and vinyl pyrrolidone (Abstract).
Bakeev does not show an example comprising the pyrrolidone in an amount of 0.1 to 0.9 molar fraction.
However, Bakeev teaches that the pyrrolidone can be present in an amount of up to 15 percent of the polymer and the caprolactam can be 70-97 percent (Col. 2, Lines 10-20). At the time of filing, it would have been obvious to a person having ordinary skill in the art to use the .15 molar fraction of Bakeev in the copolymer because Bakeev teaches that this is a suitable range of the pyrrolidone to prevent formateion of gas hydrates (Abstract).
As to Claim 2: Bakeev renders obvious the mixture of claim 1 (supra).
Bakeev does not expressly teach the ph is 7 or less. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Bakeev. However, Bakeev teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there were no additional materials or method steps to change the pH to a value of less than 7. Therefore, the claimed effects and physical properties, i.e. the pH is 7 or less, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 3: Bakeev renders obvious the mixture of claim 1 (supra). Bakeev further teaches that the hydrocarbon can include methane, ethane and propane (Col. 3, Lines 25-35).
As to Claim 4: Bakeev renders obvious the mixture of claim 1 (supra). Bakeev further teaches that the hydrocarbon is preferably present in an amount of greater than 97% (Col. 2, Lines 50-60).
As to Claim 5: Bakeev renders obvious the mixture of claim 1 (supra). Bakeev teaches that the amount of inhibitor is 1 to 9% of the aqueous phase which in itself is 0.1 to 3 % of the total composition (Col. 2, Lines 50-60). Accordingly, the amount of the polymer would be between 5 and 100 ppm.
As to Claim 6: Bakeev renders obvious the mixture of claim 1 (supra). Bakeev teaches that the polymer is made by mixing the monomers and reacting them which would result in a random copolymer (Col. 2, Lines 10-20, Col. 4, Lines 20-45).
As to Claim 7: Bakeev renders obvious the mixture of claim 1 (supra). Bakeev further teaches that the molecular weight should be between 500 and 2500 g/mol (Abstract).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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