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 .
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.
Claims 1, 5, 8-12, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Moloney (US 2017/0247798 A1) ("Moloney" herein- cited previously) and further in view of Dhawan et al. (US 2019/00062187 A1) ("Dhawan" herein).
Claim 1.
Moloney discloses a method comprising: .
introducing a paraffin wax dispersant composition to a hydrocarbon fluid, wherein the paraffin wax dispersant composition comprises: [0009, 0079-0082]
a sorbitol-based compound; (i.e. gas hydrate inhibitor) [0060]
a quaternary ammonium compound; (i.e.1-40%) [0039-0042]
a solvent; (i.e. 40wt.%-80 wt.%) [0038]
monoethanolamine; (i.e. hydrogen sulfide scavenger) [0049] and
an alkyl benzene sulfonic acid. (i.e. 0.5 wt.% -5 wt.%) [0024-0026, 0049]
2- mercaptoethanol, (i.e. 1-15wt %) [0048]
Moloney however does not explicitly disclose, wherein a mass ratio of the monoethanolamine to the alkyl benzene sulfonic acid in the paraffin wax dispersant composition is equal to or equal to or greater than 1:1 and less than 10:1.
Dhawan teaches the above limitation. (See paragraphs 0112-0113→ Dhawan teaches this limitation in that the corrosion control composition can further comprise a hydrogen sulfide scavenger. The composition can comprise from about 1 wt.-% to about 50 wt.-%, …of a hydrogen sulfide scavenger, based on total weight of the composition. Suitable additional hydrogen sulfide scavengers include, but are not limited to, … triazines (e.g., monoethanolamine triazine, monomethylamine triazine, and triazines from multiple amines or mixtures thereof). The corrosion control composition can further comprise a gas hydrate inhibitor. The composition can comprise from about 0.1 wt.-% to about 25 wt.-%,.. has hydrate inhibitor, based on total weight of the composition. Suitable gas hydrate inhibitors include, but are not limited to, thermodynamic hydrate inhibitors (THI), kinetic hydrate inhibitors (KHI), and anti-agglomerates (AA). Suitable thermodynamic hydrate inhibitors include, but are not limited to, …….sugar alcohols (e.g. sorbitol, mannitol).) for the purpose of having corrosion control compositions. [0054]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Maloney, with the above limitation, as taught by Dhawan, in order to have a corrosion control composition.
Since Moloney discloses the same composition comprising a sorbitol-based compound, a quaternary ammonium compound, a solvent, monoethanolamine; an alkyl benzene sulfonic acid, and 2-mercaptoethanol, it would be a paraffin wax dispersant.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 5.
Moloney discloses the method of claim 1, wherein a total activity of the paraffin wax dispersant composition is in a range of from 20 wt.% to 50 wt.% based on a total weight of the paraffin wax dispersant composition, wherein the total activity is defined as a sum wt.% of the sorbitol-based compound, the quaternary ammonium compound, the
monoethanolamine, and the alkyl benzene sulfonic acid in the paraffin wax dispersant composition. (i.e. calculated by examiner amount of solvent 80 wt. %,[0038] total of all the components : sorbitol-based compound + a quaternary ammonium compound + monoethanolamine + an alkyl benzene sulfonic acid = 20 wt. %); [0024-0026, 0039- 0042, 0049, 0060]
Claim 8.
Moloney discloses the method of claim 1, having from 2 wt.% to 5 wt.% of the 2- mercaptoethanol based on a total weight of the paraffin wax dispersant composition. [0048]
Claim 9.
Moloney discloses the method of claim 1, wherein a concentration of the paraffin wax dispersant composition in the hydrocarbon fluid is in a range of from 100 ppmw to 1,000 ppmw based on a total weight of the hydrocarbon fluid. [0009, 0079-0082] .
Claim 10.
Moloney discloses the method of claim 1, wherein a total activity of the paraffin wax dispersant composition is in a range of from 20 wt.% to 50 wt.% based on a total weight of the paraffin wax dispersant composition, wherein the total activity is defined as a sum wt.% of the sorbitol-based compound, the quaternary ammonium compound, the monoethanolamine, the alkyl benzene sulfonic acid, and the 2-mercaptoethanol in the paraffin wax dispersant composition. (i.e. calculated by examiner amount of solvent 80wt. %,[0038] total of all the components : sorbitol-based compound + a quaternary ammonium compound + monoethanolamine + an alkyl benzene sulfonic acid + 2-mercaptoethanol= 20wt.%); [0024-0026, 0039-0042, 0048-0049, 0060]
Claim 11.
Moloney discloses the method of claim 1, wherein the hydrocarbon fluid comprises a crude oil, a hydrocarbon gas, a condensate, or combinations thereof. [0009, 0079- 0082]
Claim 12.
Moloney discloses a paraffin wax dispersant composition comprising:
a sorbitol-based compound; [0060]
a quaternary ammonium compound; (i.e.1-40%) [0039-0042]
a solvent; (i.e. 40wt.%-80wt.%) [0038]
monoethanolamine; [0049] and
an alkyl benzene sulfonic acid. (i.e. 0.5wt.% -5wt.%) [0024-0026, 0049]
2- mercaptoethanol, (i.e. 1-15wt %) [0048]
2- mercaptoethanol, (i.e. 1-15wt %) [0048]
2- mercaptoethanol, (i.e. 1-15wt %) [0048]
Moloney however does not explicitly disclose, wherein a mass ratio of the monoethanolamine to the alkyl benzene sulfonic acid in the paraffin wax dispersant composition is equal to or equal to or greater than 1:1 and less than 10:1.
Dhawan teaches the above limitation. (See paragraphs 0112-0113→ Dhawan teaches this limitation in that the corrosion control composition can further comprise a hydrogen sulfide scavenger. The composition can comprise from about 1 wt.-% to about 50 wt.-%, …of a hydrogen sulfide scavenger, based on total weight of the composition. Suitable additional hydrogen sulfide scavengers include, but are not limited to, … triazines (e.g., monoethanolamine triazine, monomethylamine triazine, and triazines from multiple amines or mixtures thereof). The corrosion control composition can further comprise a gas hydrate inhibitor. The composition can comprise from about 0.1 wt.-% to about 25 wt.-%,.. has hydrate inhibitor, based on total weight of the composition. Suitable gas hydrate inhibitors include, but are not limited to, thermodynamic hydrate inhibitors (THI), kinetic hydrate inhibitors (KHI), and anti-agglomerates (AA). Suitable thermodynamic hydrate inhibitors include, but are not limited to, …….sugar alcohols (e.g. sorbitol, mannitol).) for the purpose of having corrosion control compositions. [0054]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Maloney, with the above limitation, as taught by Dhawan, in order to have a corrosion control composition.
Since Moloney discloses the same composition comprising a sorbitol-based compound, a quaternary ammonium compound, a solvent, monoethanolamine; an alkyl benzene sulfonic acid, and 2-mercaptoethanol, it would be a paraffin wax dispersant.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 17.
Moloney discloses the paraffin wax dispersant composition of claim 12, having from 2 wt.% to 5 wt.% of the 2-mercaptoethanol based on a total weight of the paraffin wax dispersant composition. [0048]
Claim 18.
Moloney discloses the paraffin wax dispersant composition of claim 12, containing
the sorbitol-based compound, [0060]
12 wt.% to 31 wt.% quaternary ammonium compound, ;(i.e.1-40%) [0039-0042]
the monoethanolamine, [0049]
0.2 wt.% to 0.5 wt.% of the alkyl benzene sulfonic acid, (i.e. 0.5 wt. % -5 wt.%)
[0024-0026, 0049]
2 wt.% to 5 wt.% of the 2-mercaptoethanol [0048] and
56 wt.% to 78 wt.% of the solvent, (i.e. 40wt.%-80 wt.%) [0038]
based on a total weight of the paraffin wax dispersant composition. Moloney, however, does not explicitly disclose containing 2 wt.% to 4 wt.% of the sorbitol-based compound, and 1.3 wt.% to 2.9 wt.% of the monoethanolamine based on a total weight of the paraffin wax dispersant composition. (Same as claim 12)
Claim 19.
Moloney discloses the paraffin wax dispersant composition of claim 16, having a total activity in a range of from 20 wt.% to 50 wt.% based on a total weight of the paraffin wax dispersant composition, wherein the total activity is defined as a sum wt.% of the sorbitol-based compound, the quaternary ammonium compound, the monoethanolamine, the alkyl benzene sulfonic acid, and the 2- mercaptoethanol. (i.e. calculated by examiner amount of solvent 20 wt.% [0038] total of all the components : sorbitol-based compound + a quaternary ammonium compound + monoethanolamine + an alkyl benzene sulfonic acid + 2-mercaptoethanol= 80wt.%);
[0024-0026, 0039-0042, 0048-0049, 0060] .
Claim 20.
Moloney discloses a mixture comprising:
a hydrocarbon fluid; [0079-0082] and the paraffin wax dispersant composition of claim 12. [0009, & claim 12]
Response to Arguments
Applicant’s arguments, filed on 07/27/2026, with respect to Claims 1, 5, 11, 12, and 20 are rejected under 35 U.S.C. 102 (a) (1) as being anticipate by Moloney (US 2017/0247798 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in set forth below.
In response to Applicant’s argument that “Maloney does not disclose the workable range for using monoethanolamine in combination with alkyl benzene sulfonic acid as a paraffin wax dispersant so as to render the claimed mass ratio obvious, and 2) the presence of 2-mercaptoethanol in the paraffin wax dispersant composition produces unexpected results,” it is well settled that a patent cannot be granted for a an applicant’s discovery of a result, even though it may be unexpectedly good, which would flow logically from the teaching of the prior art. In re Rau , 117 USPQ 215 (CCPA 1958).
It is elementary that the mere recitation of a newly discovered function or property possessed by things in the prior art, does not cause a claim drawn to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed invention, may in fact, be a characteristic of the prior art, it possess the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart, 169 USPQ 226 (CCPA 1971).
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.
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 SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 1616 08/27/2026
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