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 .
Election/Restrictions
Applicant’s election without traverse of Group II, glycol ether as oil soluble solvent and dodecyl benzene sulfonic acid as surfactant, claims 14-17 and 20-31 in the reply filed on 24 September 2026 is acknowledged.
Claims 1-4 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
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 20-21, 23 and 24 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.
Claims 20 and 23 improperly recite the Markush group in the form of “selected from A, B and C”, which renders the claim indefinite because it is unclear which members of the group are part of the claimed invention. A proper Markush groups may be recited as "...selected from the group consisting of A, B and C" or "...selected from A, B or C." See MPEP § 2173.05(h).
Claims 21 and 24 are rejected as depending upon the rejected claims but fail to remedy the 112 issue.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 14-17 and 20-24 are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by US2016/0257879A1(Huang) as evidenced by US2022/0025245A1(Mangadlao)
Regarding claims 14-15 and 20, Huang teaches a method of for recovering a fluid from a gas or oil well, a wellbore, or a pipeline comprises introducing a composition into the gas well, the oil well, the wellbore, or the pipeline, wherein the fluid comprises a hydrocarbon such as crude oil, refined oil, or natural gas condensate, water/oil field brines or a combination thereof ([0017], [0064] and [0070]).
Huang teaches that the composition comprises a liquid carrier comprising water, an alcohol, an ether, a glycol, a glycol ether, or a combination thereof([0037]), thus the presence of an oil soluble solvent, i.e., glycol ether, and a co-solvent, i.e., a glycol.
Huang teaches that the composition further comprises scale inhibitors ([0041]), and other oil field additives including paraffin inhibitors ([0039] and [0052]), which meets an emulsion viscosity reducer since paraffin inhibitors are chemicals used in the production of oil and gas to prevent or minimize the deposition of naturally-occurring paraffins in crude oils and other produced fluids and to reduce their viscosity in order to improve flow in the production, as evidenced by Mangadlao ([0002]).
Regarding claims 16 and 17, Huang teaches that the composition is injected down a capillary string or a casing via a gas lift ([0062]).
Regarding claim 21, Huang teaches the alternative oil soluble solvent of glycol ether thus meets the claim.
Regarding claim 22, Huang teaches that the glycol ether comprises ethylene glycol monobutyl ether, diethylene glycol monoethyl ether ([0037]), which meets the claimed oil soluble solvent.
Regarding claims 23 and 24, Huang teaches the carrier alcohol comprises methanol, ethanol, isopropanol, ethylene glycol and propylene glycol ([0037]), which meets the claimed cosolvent.
Claim Rejections - 35 USC § 103
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 25-31 are rejected under 35 U.S.C. 103 as being unpatentable over Huang as evidenced by Mangadlao.
The teachings of Huang are set forth above.
Regarding claim 25, Huang teaches that the carrier fluid, i.e., the solvent system, can range from 50 to 90% based on the total weight of the composition ([0056]), which overlaps with the claimed amount.
One of ordinary skill in the art at the time the invention was made would have found it obvious to include the carrier fluid at the instantly claimed range since it has been held that in the case where the claimed ranges “overlap or lie inside range disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claim 26, Huang teaches the scale inhibitor is less than 1 % of the composition ([0039]), which overlap with the claimed range and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I.
Regarding claim 27, Huang teaches the oil field additive such as paraffin inhibitor, i.e., viscosity reducer, is present in less than 1 % of the composition ([0039] and [0052]), which abuts the claimed amount.
It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 Titanium Metals Corp of Am v Banner, 778 F2d 775, 783, 227 USPQ 773, 779 (Fed Cir 1985).
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claims 28-31, Huang teaches the composition may further comprise an emulsion breaker such as dodecylbenzylsulfonic acid (DDBSA) ([0045]), which is present in less than 1 % of the composition ([0039]), which overlaps with the claimed amount and a prima facie case of obviousness exists. In re Wertheim, 541 f. 2d 257,191 USPQ 90(CCPA 1976). See MPEP 2144.05.I..
Generally, differences in ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such ranges is critical. See MPEP 2144.05, In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and In re Hoeschele, 406 F2d 1403, 160 USPQ 809 (CCPA 1969).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AIQUN LI whose telephone number is (571)270-7736. The examiner can normally be reached Monday-Friday 9:00 am -4:00 pm.
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/AIQUN LI/ Ph.D., Primary Examiner, Art Unit 1766
