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 .
DETAILED ACTION
Applicant’s response filed July 10, 2026 is acknowledged. Claims 1, 7, 13, and 16 are amended and claim 12 is canceled. Claims 1-11 and 13-20 are pending and further considered on the merits.
Response to Amendment
In light of applicant’s amendment, the examiner maintains the double patenting rejection and modifies all other rejections set forth in the previous office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 5-7, 9-10, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12-17 of copending Application No. 18/535904 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications recite treating produced water with a macroporous weak-acid resin, where the raw material for the macroporous weak-acid resin includes a matrix material, a porogen, a reinforcing agent, an initiator, and a dispersant in a mass ratio of (25-35):(32-50):(1-3):(0.8-1.2):(6-9). While the reference application recites additional limitations, it would be anticipated by the broader current claims of the instant application in genus/species relationship thereby establishing the current application and reference application as patentably indistinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 17 and 19 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.
Claim 17 recites the limitations "the acidic solution" and “the alkaline solution” in lines 3-4. There is insufficient antecedent basis for these limitations in the claim. For the purposes of examination, the examiner is interpreting claim 17 to depend from claim 15.
Claim 19 recites “wherein in the regeneration treatment, the injection flow rate of the heavy oil produced water is greater than 100 m3/h when the macroporous weak-acid resin is washed with the heavy oil produced water”. It is unclear whether the injection flow rate is optional if the washing step does not use heavy oil produced water. For the purposes of examination, the examiner is interpreting the injection flow rate being optional if the washing step does not use heavy oil produced water.
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.
Claim(s) 1-6, 9-11, and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al., CN 102815765B (Jiang, IDS).
Regarding claim 1, Jiang discloses a method for removal of divalent and trivalent scaling ions from heavy oil produced water (see “softening method” and “thick oil sewage”, abstract) comprising:
Removing the scaling ions from the water via adsorptive treatment with a macroporous weak acid resin (abstract), the resin raw material including:
A matrix material (see “polystyrene”, Claim 1);
A porogen (see “porogens”, Claim 1);
A reinforcing agent (see “acetoxystyrene monomer”, Claim 1);
An initiator (see “initiator”, Claim 1); and
A dispersant (see “dispersant”, Claim 1);
Wherein the resin is capable of reducing the concentration of divalent and trivalent scaling ions to 50 µg/L or less (see Embodiments 2, 4).
Claim(s) 1 recites limitations regarding manipulative steps to produce the macroporous weak-acid resin. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See MPEP 2113). In this case, the resin as recited is disclosed in Jiang (see Embodiment 1, Claim 1).
Regarding claims 1 and 5-6, Jiang does not disclose the recited mass ratio of components making up the resin. However, it would have been obvious to one having ordinary skill in the art at the time of invention to modify the mass ratio of components provided in Jiang, because synthesis parameters of the ion exchange resin are routinely optimized to improve resin durability, exchange capacity, reaction rate, and selective adsorption, and that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art absent a showing of criticality or unexpected results (MPEP 2144.04. Section II).
Regarding claim 2, Jiang discloses a method not including silicon removal (abstract, Embodiments 2-4).
Regarding claims 3-4, while Jiang discloses the resin having increased exchange capacity, high surface area, macroporous pores, and heat resistance among other properties (see Embodiment 1), Jiang does not disclose the recited physical properties provided in claim 3. However, it would have been obvious to one having ordinary skill in the art to modify the resin of Jiang to encompass said physical properties, since such properties are considered to be result effective variables (in light of resin production parameters) and that discovering an optimum or workable range of a result effective variable involves only routine skill in the art absent a showing of criticality or unexpected results (MPEP 2144.04, Section II, Part B).
Regarding claim 9, Jiang discloses a method wherein the raw material for the resin comprises a divinylbenzene crosslinking agent (see Embodiment 1).
Regarding claims 10-11, Jiang does not disclose the recited mass ratio of components making up the resin. However, it would have been obvious to one having ordinary skill in the art at the time of invention to modify the mass ratio of components provided in Jiang, because synthesis parameters of the ion exchange resin are routinely optimized to improve resin durability, exchange capacity, reaction rate, and selective adsorption, and that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art absent a showing of criticality or unexpected results (MPEP 2144.04. Section II).
Claim(s) 13 recites limitations regarding manipulative steps to produce the macroporous weak-acid resin. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (See MPEP 2113). In this case, the resin as recited is disclosed in Jiang (see Embodiment 1, Claim 1).
Regarding claim 14, Jiang discloses a method further including a regeneration treatment of the resin (Claim 3). While Jiang does not disclose the recited threshold for triggering the regeneration treatment, it can be envisaged that a threshold amount of residual divalent/trivalent ions in the treated stream triggers a regeneration cycle.
At the time of invention, it would have been obvious to one having ordinary skill in the art to modify the method of Jiang to trigger a regeneration cycle based on a 50 µg/L threshold , since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art absent a showing of criticality or unexpected results (MPEP 2144.04, Section II).
Regarding claim 15, Jiang discloses the regeneration treatment including soaking and flushing the resin in an acidic and alkaline solution successively (Claim 3). While Jiang does not disclose the recited threshold for triggering the end of regeneration treatment, it can be envisaged that a threshold exists to ensure optimum performance for subsequent use.
At the time of invention, it would have been obvious to one having ordinary skill in the art to modify the method of Jiang to include a regeneration end-point trigger in order to ensure optimum performance for the resin in subsequent use and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art absent a showing of criticality or unexpected results (MPEP 2144.04, Section II).
Regarding claim 16, Jiang is relied upon in the rejection of claims 14-15 set forth above. Jiang further discloses the regeneration treatment including soaking the resin in an acidic solution and removing the acidic solution followed by soaking the resin in an alkaline solution and removing the alkaline solution (Claim 3).
Regarding claim 17, while Jiang discloses a method including a regeneration step comprising an acidic and alkaline soaking step for a duration (Claim 3), Jiang does not disclose a method where the acidic/alkaline soaking steps comprise the recited durations. However, it would have been obvious to one having ordinary skill in the art to modify the method of Jiang to have the recited soaking durations since it has been held that where the general conditions of a claim are recited in the art, discovering the optimum or workable ranges involves only routine skill in the art absent a showing of criticality or unexpected results (MPEP 2144.04, Section II).
Regarding claim 18, Jiang discloses using hydrochloric acid as the acidic solution and sodium hydroxide as the alkaline solution, where the hydrochloric acid mass concentration is from 3-5% and the sodium hydroxide mass concentration is 3-5% (Claim 3). While Jiang does not disclose the pH of the acidic/alkaline solutions, it would have been obvious to one having ordinary skill in the art to modify the method of Jiang to use the recited pH values, since it has been held that where the general conditions of a claim are recited in the prior art, discovering the optimum or workable ranges involves only routine skill in the art absent a showing of criticality or unexpected results (MPEP 2144.04, Section II).
Regarding claim 19, Jiang discloses the regeneration treatment using distilled water to wash the resin (Claim 3). Since the washing step does not use heavy oil produced water, the injection rate of said heavy oil produced water is unnecessary.
Regarding claim 20, Jiang discloses a method wherein regeneration treatment further comprises washing the resin with demineralized water after alkaline solution treatment (Claim 3).
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jiang in view of Dong et al., CN 105884967 (Dong, IDS).
Regarding claim 7, Jiang discloses the matrix material comprising an acrylate-based compound (see “methacrylic acid propyl trimethoxy silicane”) and the dispersant comprising PVA and gelatin (see “gelatin”, “polyvinyl alcohol”). Jiang does not disclose the reinforcing agent or porogen including those elements recited in the claim. However, Dong discloses it is common to use acrylonitrile as a reinforcing agent and toluene as a porogen in macroporous weak-acid resins (pg. 9).
At the time of invention, it would have been obvious to one having ordinary skill in the art to modify the method of Jiang to utilize the reinforcing agent and porogen as described in Dong since it has been held to be within the general skill of a worker in the art to select known materials on the basis of their suitability for the intended use as a matter of obvious design choice (MPEP 2144.07).
Regarding claim 8, while Jiang discloses using a methacrylic acid-based matrix material (see above), Jiang does not disclose the acrylate based compound being one of those recited in claim 8. However, it would have been obvious to one having ordinary skill in the art to modify the method of Jiang (in view of Dong) to utilize methyl acrylate, ethyl acrylate, methyl 2-methacrylate or ethyl 2-acrylate as the matrix material since it has been held to be within the general skill of a worker in the art to select known materials on the basis of their suitability for the intended use as a matter of obvious design choice (MPEP 2144.07).
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 DIRK R BASS whose telephone number is (571)270-7370. The examiner can normally be reached 8-4:30 EST 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, Bobby Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DIRK R. BASS
Primary Examiner
Art Unit 1779
/DIRK R BASS/Primary Examiner, Art Unit 1779
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