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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/22/26 has been entered.
Claim Rejections - 35 USC § 102/35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 11, 12, 14 and 15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nguyen (US 2013/0261227).
With respect to independent claim 1, Nguyen discloses a water and oil emulsion-modifier formulation (abstract), the formulation comprising:
i ) at least two different ethoxylated alcohols having a structure shown in formula (1) ([0032]; [0039]; [0049]-[0050], wherein two specific formulations comprising two different ethoxylated alcohols having the structure of formula (1) are disclosed):
R-O-(C2H4O)n-H (1)
wherein R comprises linear or branched alkyl groups, having from 6 to 18 carbon atoms;
n is from 3 to 20; and
ii) at least one solvent selected from the group consisting of alcohols, ethers, and mixtures thereof ([0037]; [0049]-[0050]);
the formulation being able to prevent or resolve water and oil emulsions in brine or acidic environments, the brine being up to 150000 total dissolved solids or the acidic environment being up to 30 wt% acid.
Nguyen discloses the above formulation as used to prevent, break or resolve various types of emulsions, including complex emulsions and crude petroleum oil emulsions ([0022]). The reference additionally suggests examples wherein crude oil emulsions that are prevented, broken or resolved therewith include high asphaltene emulsions such as those originating in the Gulf of Mexico ([0053]). See evidence cited in Conclusion wherein such are known to have high TAN numbers. Although silent to explicitly stating wherein the above formulation is “able to prevent or resolve water and oil emulsions in brine or acidic environments, the brine environment being up to 150,000 TDS or the acidic environment being up to 30 wt% acid,” since Nguyen explicitly discloses a formulation comprising each of the components instantly claimed and clearly discloses the ability such to prevent or resolve water and oil emulsions, including those in environments containing various crude types such as high asphaltene containing crudes, the formulation of Nguyen would inherently act in the same manner as claimed, i.e., it will be “able to prevent or resolve water and oil emulsions in brine or acidic environments, the brine environment being up to 150,000 TDS or the acidic environment being up to 30 wt% acid.”
If there is any difference for the ability of such between the formulation of Nguyen and that of the instant claims, the difference would have been minor and obvious insofar as because “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 discloses and/or claims are necessarily present. See MPEP 2112.01(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to dependent claim 2, Nguyen discloses where R comprises linear or branched alkyl groups having from 6 to 16 carbon atoms ([0032]; [0039]; [0049]-[0050], wherein two specific formulations comprising two different ethoxylated alcohols having the structure of formula (1) are disclosed).
With respect to dependent claim 3, Nguyen discloses wherein n is from 3 to 18 ([0032]; [0039]; [0049]-[0050], wherein two specific formulations comprising two different ethoxylated alcohols having the structure of formula (1) are disclosed).
With respect to dependent claim 4, Nguyen discloses wherein the formulation further comprises water up to 99.9 wt% ([0049]-[0050]).
With respect to dependent claim 5, Nguyen discloses the above formulation as used to prevent, break or resolve various types of emulsions, including complex emulsions and crude petroleum oil emulsions ([0022]). The reference additionally suggests examples wherein crude oil emulsions that are prevented, broken or resolved therewith. Although silent to explicitly stating wherein the above formulation is “able to prevent or resolve water and oil emulsions in brine environments of up to 130,000 TDS,” since Nguyen explicitly discloses a formulation comprising each of the components instantly claimed and clearly discloses the ability such to prevent or resolve water and oil emulsions, including those in environments containing various crude types such as high asphaltene containing crudes, the formulation of Nguyen would inherently act in the same manner as claimed, i.e., it will be “able to prevent or resolve water and oil emulsions in brine environments of up to 130,000 TDS.” If there is any difference for the ability of such between the formulation of Nguyen and that of the instant claims, the difference would have been minor and obvious insofar as because “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 discloses and/or claims are necessarily present. See MPEP 2112.01(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to dependent claim 6, Nguyen discloses wherein said formulation is able to prevent or resolve water and oil emulsions in environments having a pH up to 12 ([0052], wherein the pH is 11; [0055]-[0056], wherein the pH is 10.9). Additionally, the Examiner notes, Nguyen discloses the above formulation as used to prevent, break or resolve various types of emulsions, including complex emulsions and crude petroleum oil emulsions ([0022]). Although silent to explicitly stating wherein said formulation is “able to prevent or resolve water and oil emulsions in environments having a pH of up to 12,” since Nguyen explicitly discloses a formulation comprising each of the components instantly claimed and clearly discloses the ability such to prevent or resolve water and oil emulsions, including those in environments containing various crude types, the formulation of Nguyen would inherently act in the same manner as claimed, i.e., it will be “able to prevent or resolve water and oil emulsions in environments having a pH of up to 12.” If there is any difference between the ability of such for the formulation of Nguyen and that of the instant claims, the difference would have been minor and obvious insofar as because “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 discloses and/or claims are necessarily present. See MPEP 2112.01(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to dependent claim 7, Nguyen discloses the above formulation as used to prevent, break or resolve various types of emulsions, including complex emulsions and crude petroleum oil emulsions ([0022]). The reference additionally suggests examples wherein crude oil emulsions that are prevented, broken or resolved therewith include high asphaltene emulsions such as those originating in the Gulf of Mexico ([0053]). See evidence cited in Conclusion wherein such are known to have high TAN numbers. Although silent to explicitly stating wherein the above formulation is “able to prevent or resolve water and oil emulsions in acidic environments of up to 20 wt% acid,” since Nguyen explicitly discloses a formulation comprising each of the components instantly claimed and clearly discloses the ability such to prevent or resolve water and oil emulsions, including those in environments containing various crude types such as high asphaltene containing crudes, the formulation of Nguyen would inherently act in the same manner as claimed, i.e., it will be “able to prevent or resolve water and oil emulsions in acidic environments of up to 20 wt% acid.” If there is any difference for the ability of such between the formulation of Nguyen and that of the instant claims, the difference would have been minor and obvious insofar as because “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 discloses and/or claims are necessarily present. See MPEP 2112.01(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to dependent claim 8, Nguyen discloses the above formulation as able to prevent or resolve water and oil emulsions in various environments, including complex emulsions and crude petroleum oil emulsions ([0022]), and, further, suggests examples wherein crude oil emulsions that are prevented, broken or resolved therewith include high asphaltene emulsions such as those originating in the Gulf of Mexico ([0053]). See evidence cited in Conclusion wherein such are known to have high TAN numbers. Although silent to explicitly stating wherein said formulation is “able to prevent or resolve water and oil emulsions in environments having a pH of down to 2,” since Nguyen explicitly discloses a formulation comprising each of the components instantly claimed and clearly discloses the ability such to prevent or resolve water and oil emulsions, including those in environments containing various crude types, the formulation of Nguyen would inherently act in the same manner as claimed, i.e., it will be “able to prevent or resolve water and oil emulsions in environments having a pH of down to 2.” If there is any difference between the ability of such for the formulation of Nguyen and that of the instant claims, the difference would have been minor and obvious insofar as because “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 discloses and/or claims are necessarily present. See MPEP 2112.01(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With respect to dependent claim 11, Nguyen discloses wherein the solvent is selected from the group as claimed ([0037]; [0049]-[0050]).
With respect to dependent claim 12, Nguyen discloses wherein the formulation comprises at least two solvents comprising alcohols and/or ethers ([0037]; [0049]).
With respect to dependent claim 14, Nguyen discloses wherein the ethoxylated alcohols are from about 10-60wt% of the combined ethoxylated alcohols and solvent or solvents content ([0049]-[0050], wherein the ethoxylated alcohol presence can be determined for the combined ethoxylated alcohol and solvent content of the examples).
With respect to independent claim 15, Nguyen discloses a method for preventing or resolving water and oil emulsions (abstract; [0022]), comprising:
i ) providing a formulation comprising:
a) at least two different ethoxylated alcohols having a structure shown in formula (I) ([0032]; [0039]; [0049]-[0050], wherein two specific formulations comprising two different ethoxylated alcohols having the structure of formula (I) are disclosed):
R-O-(C2H4O)n-H (1)
wherein R comprises linear or branched alkyl groups, having from 6 to 18 carbon atoms;
n is from 3 to 20; and
b) at least one solvent selected from the group consisting of alcohols, ethers, and mixtures thereof ([0037]; [0049]-[0050]); and
ii) contacting the formulation with a brine or acidic water and oil emulsion, the brine having up to 150000 total dissolved solids or the acidic water and oil emulsions being up to 30 wt% acid, the formulation being in a concentration able to prevent or resolve the water and oil emulsion (abstract; [0021]-[0022]).
Nguyen discloses the above formulation as used to prevent, break or resolve various types of emulsions, including complex emulsions and crude petroleum oil emulsions ([0022]). The reference additionally suggests examples wherein crude oil emulsions that are prevented, broken or resolved therewith include high asphaltene emulsions such as those originating in the Gulf of Mexico ([0053]). See evidence cited in Conclusion wherein such are known to have high TAN numbers. Although silent to explicitly stating wherein the above formulation is able to prevent or resolve water and oil emulsions in the brine or acidic environments claimed, since Nguyen explicitly discloses a formulation comprising each of the components instantly claimed and clearly discloses the ability such to prevent or resolve water and oil emulsions, including those in environments containing various crude types such as high asphaltene containing crudes, the formulation of Nguyen would inherently act in the same manner as claimed, i.e., it will be “able to prevent or resolve water and oil emulsions in brine or acidic environments.”
If there is any difference for the ability of such between the formulation of Nguyen and that of the instant claims, the difference would have been minor and obvious insofar as because “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 discloses and/or claims are necessarily present. See MPEP 2112.01(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Claim Rejections - 35 USC § 103
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen.
Nguyen discloses the formulation as set forth above with respect to claim 1, wherein at least two different ethoxylated alcohols are included in the composition ([0032]; [0039]), wherein it is suggested such alkoxylated alcohols may be linear or branched ([0032]). Through example, Nguyen further provides for a composition comprising a C12 and a C8 ethoxylated alcohol ([0049]), thereby suggesting R of one ethoxylate having an alkyl chain of 6 to 10 and R of another alkyl chain of 10 to 18; it is known to one of ordinary skill in the art wherein each of such ethoxylated alcohols can be produced as linear or branched dependent upon the raw material source. Nguyen further provides an alternative example composition comprising a C12 alcohol ethoxylate and a C13 alcohol ethoxylate in the form of tridecyl alcohol ethoxylate ([0050]). The Examiner notes, tridecyl alcohol ethoxylate is a branched alcohol ethoxylate, thereby suggesting an ethoxylated alcohol wherein R is a branched alkyl chain having from 10 to 18 carbon atoms as claimed. Although Nguyen fails to provide an explicit example of a linear alkyl chain alcohol ethoxylate having from 6 to 10 carbon atoms as claimed with such a branched alkyl chain having 10 to 18 carbon atoms, the reference clearly suggests the use of both linear and branched alkoxylated alcohols that may be ethoxylated C6-C20 alcohols ([0032]), and, therefore, it is the position of the Office that it would have been obvious to one having ordinary skill in the art to try a linear alkyl chain having 6 to 10 carbon atoms as the nonionic surfactant having an HLB of less than about 9 in the formulation of Nguyen in order to yield the predictable result of preventing, breaking or resolving an emulsion therewith ([0022]) as such an option is but one option from a finite number of identified, predictable solutions disclosed by Nguyen as used for such a purpose and therefore would be expected to prevent, break or resolve such emulsions with a reasonable expectation of success.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen as applied to claim 1 above, and further in view of Mastrangelo et al. (US 2016/0046855).
Nguyen discloses the formulation as set forth above with respect to independent claim 1, wherein a water soluble solvent is included therein, with examples thereof including short chain alcohols such as methanol, ethanol and n-propanol, as well as those having 6 carbon atoms ([0037]). The reference, however, fails to disclose wherein the at least one solvent has an alkyl chain having from 12 to 20 carbon atoms, wherein R1 is branched in the 2 position as claimed. Mastrangelo et al. teaches formulations for use in asphaltene control in crude oil (abstract) wherein a solvent is used in formulating the composition; suitable solvents include alcohols containing at least 2 carbons, at least 6 carbons or 2 to 20 carbons, with examples thereof further suggested as methanol, ethanol, 2-butyloctanol ([0076]), i.e., an alcohol that is branched in the 2-position. Since Mastrangelo et al. teaches solvents that include an alcohol that is branched in the 2-position as an alternative to the alcohols having 2-6 carbon atoms disclosed by Nguyen et al., it would have been obvious to one having ordinary skill in the art to such an alcohol as 2-butyloctanol in the composition of Nguyen et al. in order to yield the predictable result of stabilizing the microemulsion-based demulsifier composition therewith. Mastrangelo et al. teaches a finite number of identified, predictable solutions as alternatives to the solvents disclosed by Nguyen et al. and, therefore, such provide a reasonable expectation of success.
Response to Arguments
Applicant’s arguments and amendments made with respect to the rejection(s) of claim(s) under 35 USC 112 and 35 USC 103, as set forth in the previous office action, 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 view of further consideration of Applicant’s amendments to the claims and the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Juyal et al. discloses the acidic nature of high asphaltene content crude oils in the Gulf of Mexico.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
03/13/26