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 .
Response to Amendment
The rejection of claims 9-11 and 16-20 under 35 USC § 102(a)(1) anticipated by Cooper is withdrawn by the examiner in view of the amendment filed on 3/19/2026.
A new Final Office Action is follows.
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 9-20 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Cooper et al. (US 2013/030631 A1) in view of Sakai et al. (US 6,268,543 B1).
Cooper teaches a method for removing mercury from hydrocarbons (crude oil) by:
introducing chemical additives with water into a hydrocarbon stream,
promoting a chemical reaction transferring mercury into an aqueous phase, and
forming a top oil phase with reduced mercury and a bottom aqueous mercury-containing phase, followed by separation (Abstract; ¶¶ [0009], [0041]–[0046]).
Cooper further teaches:
separation using oil-water separators, desalters, centrifuges, and filters (¶¶ [0050], [0053]);
introduction of additives at the wellhead / pipeline (¶¶ [0046], [0055]);
hydrocarbons comprising crude oil (¶¶ [0002], [0018]);
filtration including 0.45 µm filtration (¶ [0028]);
operation in FPSO/storage systems (¶¶ [0056], [0060]);
mixing via mixers/recirculators (¶¶ [0050]–[0052]);
additives introduced with water (¶¶ [0009], [0044]–[0046]).
Sakai teaches removing mercury from liquid hydrocarbons by:
contacting hydrocarbons with sulfur compounds (MM′S) including sulfides (e.g., Na₂S, NaHS) (col. 3, ll. 63–67; col. 4, ll. 1–20) ;
using aqueous solutions of such compounds (col. 4, ll. 1–20) ;
separating mercury via decantation/filtration (col. 5, ll. 1–15) ;
application to crude oil/NGL systems (col. 4, ll. 1–15) .
Sakai further teaches:
contacting hydrocarbons with an aqueous solution of triethylene glycol (TEG) (Comparative Example 3) .
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 by employing sulfur-containing additives such as sulfides, thiols, or sulfur-functional compounds as taught by Sakai in order to enhance mercury binding and removal, because both references address mercury removal from hydrocarbons using chemical reaction and aqueous phase separation.
Further, combining:
a glycol (aqueous organic component) with
a sulfur compound (e.g., Na₂S or dithiol)
represents the use of known components in combination within a single aqueous treatment system.
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 in view of Sakai to employ an aqueous system comprising both sulfur compounds and additional organic components (e.g., glycols) to optimize solubility, phase behavior, or contact efficiency, as a predictable variation.
Claim 10 Cooper discloses separating the phases using oil-water separators, gravity settling, centrifuges, and filters, which correspond to the recited bulk separator, desalter separator, sedimentation tank, centrifuge, filter, flotation tank, or inlet separator (¶¶ [0050], [0053]).
Claim 11 Cooper discloses introducing the chemical additive at the wellhead or into the pipeline from the production well such that the reaction occurs during transport of the crude oil (¶¶ [0046], [0055]).
Claim 16 Cooper expressly discloses that the hydrocarbons comprise crude oil (¶¶ [0002], [0018]).
Claim 17 Cooper discloses separation and characterization of mercury using filtration through a 0.45 micron filter, and disclose filtration as a separation technique (¶¶ [0028], [0041], [0053]).
Claim 18 Cooper discloses performing the mercury-removal process on floating production, storage, and offloading (FPSO) units, which are floating crude oil storage tanks, corresponding to ship cargo tanks and FSO/OCP tanks (¶¶ [0056], [0060]).
Claim 19 Cooper discloses facilitating the process by mixing using mixers, static mixers, contactors, and integrated separation units compatible with desalter mixing and recirculation (¶¶ [0050]–[0052], [0055]).
Claim 20 Cooper discloses that the chemical additives are added with water, including produced water, to the hydrocarbons (¶¶ [0009], [0044]–[0046]).
Claims 12–14
Sakai explicitly teaches aqueous triethylene glycol systems (Comparative Example 3) .
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 to employ triethylene glycol in an aqueous additive system as taught by Sakai, because Sakai establishes glycol-containing aqueous systems as known candidates for mercury treatment. Selection of terephthalic acid represents an obvious species selection within known organic acid additives.
Claim 15
Sakai teaches sulfur compounds and sulfur-reactive chemistry for mercury removal.
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 to employ thiol-containing or sulfur-functional additives as taught by Sakai, because sulfur functionality is known to bind mercury.
RESPONSE TO ARGUMENTS
Applicant’s arguments have been considered but are not persuasive.
Applicant argues Sakai teaches triethylene glycol is ineffective and thus teaches away. However, Sakai merely shows triethylene glycol alone is ineffective, not that glycol systems should be avoided. Sakai still expressly teaches aqueous triethylene glycol contacting (Comparative Example 3) . A reference does not teach away where it only shows lack of effectiveness in isolation.
Further, Sakai teaches that sulfur compounds are effective mercury-reactive agents (col. 3–4) . This would have suggested combining:
glycol (as a medium) with
sulfur species (e.g., Na₂S, dithiols).
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 aqueous system of Cooper to include both glycol and sulfur compounds as taught by Sakai, because doing so represents a predictable use of known components to improve reaction or phase behavior.
Applicant’s argument that the specific additives are not disclosed is not persuasive. The claimed additives fall within recognized classes of mercury-binding sulfur compounds (thiols, sulfides, dithiols). Selection of specific species within a known class is an obvious species selection.
Applicant’s reliance on alleged improved results is not persuasive because:
the results are not compared to the closest prior art combination (Cooper + sulfur chemistry), and
any improvement is attributable to sulfur chemistry already taught by Sakai.
Accordingly, the rejection is maintained.
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 TAM M NGUYEN whose telephone number is (571)272-1452. The examiner can normally be reached Mon - Frid.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAM M NGUYEN/Primary Examiner, Art Unit 1771