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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/1/2026 has been entered.
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 9-12 and 16-22 are rejected under 35 U.S.C. § 103 as being unpatentable over Cooper et al. (US 2013/0306311 A1) in view of Peters et al. (WO 2019/106406 A1).
Regarding claim 9, Cooper teaches a method for separating mercury from a mixture comprising hydrocarbons, particularly crude oil containing an initial concentration of mercury (¶¶ [0002]–[0003], [0037]–[0041]). Cooper contacts the crude oil with an aqueous treating solution containing a chemical additive, whereby mercury reacts with the additive and is extracted into the aqueous phase as soluble mercury complexes (¶¶ [0041], [0044]–[0045]). After contacting, the mixture separates into an oil phase having reduced mercury concentration and a water phase comprising mercury-rich wastewater, and the phases are separated (¶¶ [0045], [0049]–[0051]). Cooper specifically teaches sodium sulfide (Na₂S) as a chemical additive (¶¶ [0044], [0063]).
Cooper does not expressly teach the presently claimed selection of additives, including an organic acid.
Peters teaches a method specifically directed to extracting mercury from a mercury-containing hydrocarbon feed by contacting the feed with a hydrophilic deep eutectic solvent and separating a hydrocarbon product having a mercury concentration lower than its initial concentration (pp. 2–3; claim 1). Peters teaches that the mercury-extracting solvent comprises a hydrogen-bond donor that may be a carboxylic acid, and expressly identifies numerous organic acids, including malic, maleic, citric, lactic, pyruvic, fumaric, glycolic, succinic, acetic, tartaric, malonic, oxalic, levulinic and other organic acids (pp. 4–5; claims 4–5). Peters further states that these classes of hydrogen-bond donors provide favorable results for mercury extraction (p. 4).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention to have modified the mercury-removal process of Cooper to employ an organic-acid-containing mercury-extraction composition as taught by Peters because Peters expressly teaches organic acids as components of extraction compositions for removing mercury from mercury-containing hydrocarbon feeds and obtaining a separated hydrocarbon product having a reduced mercury concentration.
Because claim 9 recites the chemical additives in the alternative, Peters' teaching of an organic acid satisfies at least one member of the claimed Markush alternatives; it is not necessary that the prior art teach every alternative recited in claim 9.
Regarding claim 10, Cooper teaches separating treated crude oil from the aqueous phase by known separation methods including gravity settling and coalescing and teaches oil/water separation equipment (¶¶ [0043], [0050]–[0052], [0068]). Thus, Cooper teaches or renders obvious the recited separator alternatives.
Regarding claim 11, Cooper expressly teaches introducing the monatomic sulfur additive into the oil-water mixture at the wellhead, with reaction occurring in the pipeline as the material flows to the processing facility (¶ [0055]; see also ¶ [0042]).
Regarding claim 12, Cooper in view of Peters teaches the method of claim 9 as discussed above. Peters expressly teaches organic acids as mercury-extraction components, including numerous carboxylic acids (pp. 4–5; claims 4–5), thereby satisfying at least one member of the alternative group recited in claim 12.
Regarding claim 16, Cooper expressly teaches that the hydrocarbons comprise crude oil (¶¶ [0002]–[0003], [0037]–[0041]).
Regarding claim 17, Cooper expressly teaches mercury-related filtration using a 0.45 micron filter (¶¶ [0028], [0041]).
Regarding claim 18, Cooper teaches performing the mercury-removal method at an offshore facility including a floating production, storage and offloading (FPSO) unit, expressly described as a floating vessel for processing hydrocarbons and storing oil (¶ [0056]; claim 16).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention to have modified Cooper's disclosed FPSO implementation to perform the mercury-removal treatment in an oil-storage tank of the floating vessel, because Cooper expressly teaches locating the mercury-removal process on a floating vessel that stores the crude oil being treated, and use of an available crude-oil storage tank for contacting and phase separation would have predictably provided containment and residence time for the disclosed oil/water treatment.
Regarding claim 19, Cooper teaches contacting crude oil and additive using mixing valves, static mixers, mixing tanks or vessels (¶ [0050]) and expressly teaches augmenting pipeline mixing with static or in-line mixers at or downstream of the additive-introduction point (¶ [0055]).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention to have modified Cooper's disclosed crude-oil/additive mixing arrangement to employ a desalter mixer or pump-recirculation mixer because such equipment performs the same disclosed function of intimately mixing the aqueous mercury-removal additive with crude oil before subsequent oil/water phase separation.
Regarding claim 20, Cooper expressly teaches forming the treating solution by combining produced water with the water-soluble sulfur additive and thereafter contacting the aqueous solution with crude oil (¶¶ [0044]–[0046], [0048]). Thus, Cooper expressly teaches adding the chemical additive with water to the hydrocarbons.
Regarding claim 21, Cooper teaches the mercury-removal process as discussed regarding claim 9, and Peters teaches the claimed organic-acid alternative for mercury extraction from hydrocarbon feeds (pp. 2–5; claims 1, 4–5).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention to have modified Cooper's mercury-removal process to employ an organic-acid-containing mercury-extraction composition as taught by Peters because Peters expressly teaches organic acids in compositions used for extraction of mercury from mercury-containing hydrocarbon feeds to produce a separated hydrocarbon having reduced mercury concentration.
Regarding claim 22, Peters expressly teaches the organic-acid alternative recited in claim 22, including numerous carboxylic/organic acids useful in mercury-extraction compositions (pp. 4–5; claims 4–5).
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Cooper and Peters, and further in view of Jadhav et al. (US 2022/0314162 A1).
Cooper in view of Peters teaches the method of claim 12 as set forth above. However, Cooper and Peters do not teach that the glycol is triethylene glycol as required by claim 13. Peters teaches alcohols, including ethylene glycol, for mercury extraction from a hydrocarbon feed, but does not expressly disclose triethylene glycol. Peters, pp. 4–5; claim 5.
Jadhav teaches mercury removal using mercury complexing/scavenging agents in a glycol system. Jadhav teaches sulfur-containing complexing agents including sulfides, hydrosulfides, mercaptans and organic polysulfides, and expressly identifies sodium sulfide among the water-soluble sulfur compounds (¶¶ [0010]–[0011]). Jadhav further expressly teaches triethylene glycol (TEG) as a glycol solvent (¶ [0017]) and teaches that a mercury scavenger may be used in combination with glycol, expressly identifying TEG and explaining that addition of glycol increases mercury solubility and thereby further increases mercury scavenging (¶ [0021]). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention to have modified the mercury-removal process of Cooper as modified by Peters to employ triethylene glycol as the glycol in the sulfur-containing mercury-scavenging composition, as taught by Jadhav, because Jadhav expressly teaches combining mercury scavengers with TEG and explains that addition of glycol increases mercury solubility and thereby increases mercury scavenging.
Claims 15 and 23 are rejected under 35 U.S.C. § 103 as being unpatentable over Cooper and Peters and further in view of Parham et al., “Fast and efficient removal of mercury from water samples using magnetic iron oxide nanoparticles modified with 2-mercaptobenzothiazole,” Journal of Hazardous Materials 205–206 (2012), 94–100.
Cooper in view of Peters teaches the method of claim 9 as set forth above. However, Cooper and Peters do not expressly teach the further selection of the chemical additive from the group recited in claim 15, particularly 2-mercaptobenzothiazole.
Parham expressly teaches 2-mercaptobenzothiazole (MBT) for mercury removal and explains that MBT forms a strong complex with Hg(II) (p. 95). Parham experimentally demonstrates that modification with MBT substantially increases mercury-removal performance, with MBT-modified material providing approximately 92.4-98.6% removal over much of the tested concentration range (p. 97, Table 1).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention to have modified Cooper's mercury-removal process to employ 2-mercaptobenzothiazole as a mercury-binding chemical additive, as taught by Parham, because Parham expressly teaches that 2-mercaptobenzothiazole forms a strong complex with mercury and experimentally demonstrates that its mercury affinity substantially enhances mercury removal.
Because 2-mercaptobenzothiazole is expressly one of the alternative additives recited in claim 15, teaching that member is sufficient to meet the Markush limitation.
Regarding claim 23, Cooper in view of Peters teaches the method of independent claim 21 as discussed above. The combination does not expressly teach the further selection required by claim 23.
Parham expressly teaches 2-mercaptobenzothiazole (MBT) as a mercury-binding material and states that MBT forms a strong complex with Hg(II) (p. 95). Parham's experimental results further demonstrate greatly enhanced mercury removal using MBT-modified material (p. 97, Table 1).
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention to have modified the mercury-removal method of Cooper as modified by Peters to employ 2-mercaptobenzothiazole as the mercury-binding chemical additive, as taught by Parham, because Parham expressly teaches the strong mercury-complexing affinity of 2-mercaptobenzothiazole and demonstrates its effectiveness for mercury removal.
Accordingly, the combination teaches at least one member of the Markush group recited in claim 23.
Allowable Subject Matter
Claim 14 is 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAM M NGUYEN whose telephone number is (571)272-1452. The examiner can normally be reached Mon - Frid.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-273-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAM M NGUYEN/Primary Examiner, Art Unit 1771
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