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 .
Response to Arguments
The examiner notes that the previous 112 rejections are dropped due to claim amendment and the remarks. The water cut is accepted as terminology known in the art.
Applicant's arguments filed 9/18/2025 have been fully considered but they are not persuasive. The examiner respectfully responds below.
Applicant argues that the DRA (defined in the remarks as the polymer of Jovancicevic) is not for use in flowing water in oil emulsions. The term flowing is not used nor implied in the claim limitations.
The DRA is to be used in flowing pipelines. The use of pipelines used for transportation of water and hydrocarbons (and thus flowing) is described in the abstract. The water and hydrocarbon itself form an emulsion, see p 2.
Applicant argues that the DRA is delivered and applied as the invert emulsion. This is one possible application. The use of a powder form is also used. The examiner quotes the end of p 27. “Typical free radical polymerization initiators include thermally homolytic peroxides and azo compounds and redox pairs. The polymerization may be carried out in free liquid or in droplets dispersed in oil. Post-polymerization, the aqueous solvent can be left in to form a viscous dilute solution, dispersion in brine, or emulsion in oil; or removed to form a powder, or a dispersion in oil”.
Further on this point applicant argues that the DRA of the instant application is “prepared, delivered and applied in the form of a powder” to make distinct the prior art DRA from the claimed DRA. The implied claim limitation of “prepared, delivered and applied in the form of a powder” is not present or implied in any claim limitation. The claims required that a powder form of polymer 1 be combined with a powder form of polymer 2 in any point to meet the limitations of claim 1.
Applicant argues that Jovancicevic teaches against combining a fat-soluble powder with the DRA powder.
Applicant cites p 26 in the remarks.” Conventional polymer-based drag reducers for hydrocarbons (e.g. poly(alpha-olefins)) are generally not suitable for these applications because of their system fluid incompatibility.” This clearly refers to some but not all conventional drag reducers, thus some may be used. In addition, the class of drag reduces not to be used is clear alpha olefins. The combined polymer of Grabois is not an alpha olefin, but a polyacrylamide. Polyacrylamide are not taught against or unusable in Jovancicevic. To the contrary other additives known in the art may be used (p 35). Specifically mentioned is an embodiment where other drag reducing agents are used, see p 34.
This constitutes teaching and motivation to combine the two references. In no manner does Jovancicevic state or imply that only the taught DRA may be in the only drag reducing agent used. The only other type of drag reducing agent cautioned about is alpha olefins, which is not relevant to the combined invention as they are not present.
Applicant argues that emphasis that the DRA is hydrophilic. This is a required limitation of claim 1. This only teaches away from the DRA not being hydrophilic in some way, and has no bearing on the combination of the composition with other types of polymers.
Applicant argues that there is structural difference between the DRA of the instant application and the prior art. The examiner does grant this is true without further explanation or evidence. In any case any possible structural differences between the two DRA are in no way present in the claim language. All the claim limitations are met, see below.
Applicant argues that the secondary reference, Grabois does not teach or suggest combining the Polyacrylamide with other polymers. This is not required, as there is teaching, suggestion and motivation in Jovancicevic the primary reference. Grabois does not teach away from using other polymers.
As the claim limitations are met the rejection stands as stated below.
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 nonobviousness.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jovancicevic et al (US 2005/0049327 A1) and Grabois et al (US 5027843).
Jovancicevic teaches a water in oil emulsion for use in pipelines (abstract)
An additive is added to water and then added to the oil containing pipeline. The additive may be in powder form, see p 27 at the end. The additive is a polymer that contains polyacrylate. This constitutes the fat-soluble powder of claim 1. See table 1 in p 38. Also see. The polymer has a MW of up to 30 MD, see p 18. This a drag reducing agent, see abstract p 1-3.
In a case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1946), and MPEP 2144.05.
Other drag reducing agents may be added to the composition, see p 34. Anti- agglomerants may be used, see p 35.
These agents, which may be in powder form are added to water. The water is added to the pipeline. The amount used of the agent is up to 2000 ppm of the water. This is controlled by the type of (the physical properties of) the water and oil emulsion. See p 33.
The amount of water in the oil and water composition overlaps the range of 15% to 75%, see p 26.
Jovancicevic does not specifically state the make-up of the other drag reducing agent.
Grabois teaches a water in oil emulsion for use in a pipeline, see abstract and column 1 lines 1-20.
An additive is added to reduce friction (drag). The additive is a solid. See column 2 lines 50-60. The additive is a polyacrylamide, see column 2 lines 37-50. This constitutes the water-soluble powder of claim 1. The amount of the additive added to water before insertion of the pipeline is 10 to 500 ppm. See column 4 lines 5-20.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the drag reducing agent of Grabois in the invention of Jovancicevic. Jovancicevic calls for this (see above) and the agent has the advantage of being an effective drag reducing agent for a water in oil composition for a pipeline.
Given the ranges of amounts used of the two-drag reducing agent the ratio of polyacrylamide to polyacrylate overlaps the range of 1:2 to 1:4.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jovancicevic et al (US 2005/0049327 A1) and Grabois et al (US 5027843) And Vittur (US 2022/0306930 A1).
To see what Jovancicevic please see above. It does not state the particle size of the polyacrylate.
Vittur teaches a method of reducing drag in a water and oil emulsion in a pipeline. See abstract and p 1-3. The drag reducing agent is an acrylate (see p 18). The average particle size is 75 to 600 microns or less, see p 19.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the size of the drag reducing agent of Vittur in the invention of Jovancicevic. Jovancicevic calls for use of a similar agent, and this is an effective particle size for the agent to take its intended effect.
In the alternative, Vittur provides evidence that an obvious variant of the drag reducing polymer agent of Jovancicevic is one with a particle size of 75 to 600 microns.
Conclusion
THIS ACTION IS MADE FINAL. 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 FRANK C CAMPANELL whose telephone number is (571)270-3165. The examiner can normally be reached Monday-Friday 9:00-5:00.
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/FRANCIS C CAMPANELL/Examiner, Art Unit 1771
/PREM C SINGH/Supervisory Patent Examiner, Art Unit 1771