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
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Quan et al. (CN 105670576 A – cited by Applicant 10/20/23 - all citations are to English translation provided with the previous office action).
With respect to independent claim 1, Quan et al. discloses a water soluble associative amphoteric polymer of at least one monomer derived from a sulfonic acid and/or a salt thereof (p. 3, first paragraph at top, wherein 2-acrylamide-2-methylpropanesulfonic acid is disclosed) and at least one associative cationic monomer of formula (I) as claimed (p. 3, first paragraph at top of page, wherein hexadecyl dimethyl allyl ammonium chloride is disclosed); the polymer being obtained by polymerization of the monomers in the absence of surfactants (p. 3, wherein the components are mixed and heated to obtain a gel product); the amount of monomer derived from a sulfonic acid and/or a salt thereof being 72.27% (p. 3, wherein the preferred molar ratio suggests 72.72 2-acrylamido-2-methylpropane sulfonic acid) relative to the number of polymerized monomers.
With regard to the polymer as obtained by polymerization in the absence of surfactants, Quan et al. does not disclose and/or require the presence of surfactants for polymerization, and, further, suggests the same processes disclosed and claimed by Applicant as used to obtain the instant polymer, such as gel polymerization ([0088]-[0089]). As such, it would have been obvious to one having ordinary skill in the art to obtain the polymer of Quan et al. by polymerization in the absence of surfactants as such is not explicitly required thereby and furthermore, it has been held the omission of an element and its function is obvious if the function or element is not desired. See Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
With regard to the mole percent of the monomer derived from a sulfonic acid, Quan et al. suggests molar ratios for components thereof to include up to 72.72% 2-acrylamido-2-methylpropane sulfonic acid (p. 3, paragraph beginning with “Preferably the molar ratio”). The reference further suggests wherein the polymer obtained therefrom is suitable for use in drilling fluids and has good temperature and salt tolerance (abstract). Since the water soluble copolymer of Quan et al. is used in the manner as is Applicant’s, one having ordinary skill in the art would recognize through routine experimentation wherein a presence of the monomer derived from a sulfonic acid and/or a salt thereof of at least 75 mol% as optimal since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). (“A simple case in in the predictable arts that does not require expertise o find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6 lbs/ft and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”) The instant specification fails to explicitly establish the instantly claimed mole percent of at least 75 mol% as critical and it is unclear if any unexpected results are achieved by providing for such. Since the polymer of Quan et al. is suggested as providing rheology modification to a water based fluid as is Applicant’s, it does not appear that such would be considered an unexpected result of providing for the presently claimed mole percent of the monomer of sulfonic acid therein, and, as such, the determination of optimal mole percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claims 2 and 3, Quan et al. discloses wherein the monomer derived from a sulfonic acid is 2-acryalmido-2-methylepropane sulfonic acid (abstract).
With respect to dependent claim 4, Quan et al. discloses wherein in the associative cationic monomer of formula (I), R3 is as claimed (abstract, wherein R3 for hexadecyl dimethylallyl ammonium chloride is an alkyl having 16 carbon atoms).
With respect to dependent claim 5, Quan et al. discloses wherein the amount of associative cationic monomers is as claimed (p. 3, paragraph beginning with “Preferably, the molar ratio, wherein the molar ratio of hexadecyl dimethylallyl ammonium chloride is within the range as claimed).
With respect to dependent claim 6, Quan et al. discloses wherein the water-soluble associative amphoteric polymer contains 2-acryalmido-2-methylepropane sulfonic acid and at least one cationic associative monomer of formula (I), wherein R3 is an alkyl chain having 8 to 50 carbon atoms (abstract, wherein R3 for hexadecyl dimethylallyl ammonium chloride is an alkyl having 16 carbon atoms). Although the reference further discloses the inclusion of acrylamide therein (abstract), the Examiner notes, the instant specification suggests wherein nonionic monomers may or may not be included in the water-soluble associative amphoteric polymer, and wherein an example thereof includes acrylamide (page 8 of the instant specification). As such, it is the position of the Office that given the disclosure of Quan et al., one having ordinary skill in the art would recognize the ability to form the polymer of Quan et al. with or without the additional acrylamide therein as it has been held wherein the omission of an element and its function is obvious if the function of the element is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). Since the inclusion and/or exclusion of acrylamide is capable of providing for a drilling fluid additive with rheology modifying properties, it would appear to suggest the inclusion thereof is not critical to the function of the overall additive, and, as such, its inclusion would not be required.
With respect to dependent claim 7, Quan et al. discloses wherein the water-soluble associative amphoteric polymer is obtained by gel polymerization (p. 3, top paragraphs, wherein a gel polymerization is conducted).
With respect to dependent claim 8, Quan et al. discloses wherein it is in solid form (p. 3, top paragraphs, wherein the product is dried, thereby providing for a solid form thereof).
With respect to dependent claim 9, Quan et al. discloses wherein the gel product obtained from polymerization is dried to obtain a fluid loss control agent for drilling fluid (p. 3, top paragraphs). The reference, however, is silent to the size of the dried product obtained. Given the absence of evidence of criticality of the size of the obtained solid particles, as exemplified by the extensiveness of the size range claimed of 5 nm- 5mm, given Quan et al. suggests the ability of such a product as suitable for addition to a drilling fluid, as well as suitable for use for rheology modification therein, it is the position of the Office that one having ordinary skill in the art would recognize an optimal size thereof to obtain from the polymerization in order to enable to solid particles to function as intended within the drilling fluid since it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed size range as critical, as exemplified by the extensiveness of the range thereof. Since the dried solid product of Quan et al. is used to impart rheology modification to a drilling fluid, as is Applicant’s, it does not appear that such would be considered an unexpected result of employing a solid particle thereof having a size as instantly claimed, and, as such, the determination of optimal size thereof would be achievable through routine experimentation in the art.
With respect to claim 10, Quan et al. discloses a method for treating an aqueous solution, said method comprising adding to the solution the water soluble associative polymer according to claim 1 as a rheology modifier and/or suspending agent (p. 3, wherein the product is a fluid loss control agent; p. 4, wherein the additive is added to fluids (1)-(3) as described).
With respect to claim 11, Quan et al. discloses a subterranean drilling or treatment fluid comprising: an aqueous fluid selected from the group as claimed (p. 4, wherein the drilling fluid fluid loss reducer is added to aqueous fluids); and between 0.1-5% by weight of the polymer according to claim 1 (p. 5-6, Examples, wherein 1% of the additive is added to the drilling fluids).
With respect to claim 12, Quan et al. discloses a subterranean drilling o treatment method comprising injecting the subterranean drilling or treatment fluid according to claim 11 under the earth’s surface, wherein, in said method, the polymer acts as claimed (abstract; p. 5-7, Examples).
With respect to dependent claim 13, Quan et al. discloses the polymer as having good temperature tolerance (abstract) and further suggests an example wherein such a polymer is tested at a temperature of 160oC (p. 3, above “Description of drawings). As such, it would have been obvious to one having ordinary skill in the art to inject such into a formation at a temperature within the range as claimed since such is shown to be capable of use at temperatures therein, and, thus, one of ordinary skill in the art would recognize the ability thereof to function under such conditions and provide fluid loss control therein.
With respect to dependent claim 14, Quan et al. discloses wherein the polymer has good salt tolerance (abstract), and, further, examples of use thereof with salt concentration of 15% (p. 3, above “Description of drawings). Although silent to the salinity of the fluid in mg/L, given Quan’s suggestion that such polymers have good salt tolerance and can be used in fluids having salt concentrations of 15%, it is the position of the Office that one having ordinary skill in the art would recognize the optimal salinity fluids to utilize as the drilling fluid in Quan et al. since
since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed salinity as critical and it is unclear if any unexpected results are achieved by providing for such. Since Quan et al. suggests the polymer as having good salt tolerance, and, further, provides examples of drilling fluids and salinities thereof containing such a polymer, wherein the polymer is capable of imparting rheology modification thereto, it does not appear that such abilities of the polymer in the salinity range as claimed would be considered an unexpected result, and, as such, the determination of optimal salinity for the drilling fluid would be achievable through routine experimentation in the art.
With respect to dependent claim 15, Quan et al. discloses wherein the associative cationic monomer of formula (I), R3 is as claimed (abstract, wherein R3 for hexadecyl dimethylallyl ammonium chloride is an alkyl having 16 carbon atoms).
With respect to dependent claim 16, Quan et al. discloses wherein the amount of associative cationic monomers is as claimed (p. 3, paragraph beginning with “Preferably, the molar ratio, wherein the molar ratio of hexadecyl dimethylallyl ammonium chloride is within the range as claimed).
With respect to dependent claim 17, Quan et al. discloses wherein the amount of associative cationic monomers is as claimed (p. 3, paragraph beginning with “Preferably, the molar ratio, wherein the molar ratio of hexadecyl dimethylallyl ammonium chloride is within the range as claimed).
With respect to dependent claim 18, Quan et al. discloses wherein the water-soluble associative amphoteric polymer is obtained by gel polymerization (p. 3, top paragraphs, wherein a gel polymerization is conducted).
With respect to dependent claim 19, Quan et al. discloses wherein the water-soluble associative amphoteric polymer is obtained by gel polymerization (p. 3, top paragraphs, wherein a gel polymerization is conducted).
With respect to dependent claim 20, Quan et al. discloses wherein it is in solid form (p. 3, top paragraphs, wherein the product is dried, thereby providing for a solid form thereof).
Response to Arguments
Applicant’s arguments and amendments made with respect to the claim objections as set forth in the previous office action, have been fully considered and are persuasive. The claim objections as set forth therein have been withdrawn.
Applicant's arguments with respect to the rejections of claims 1-20 as unpatentable over Quan et al. have been fully considered but they are not persuasive.
Applicant describes the present invention, noting the claimed polymer is a rheology modifier and the composition improves the performance and resistance under extreme conditions in terms of pH, free radicals and high salinity.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the polymer is a rheology modifier and/or the composition improves the performance and resistance under extreme conditions in terms of pH, free radicals and high salinity) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further notes wherein the examples according to the invention are polymers comprising 75-99 mol% of ATBS and 1 mol% of associative monomer, optionally 24 mol% of acrylic acid.
The Examiner notes, although the examples of the specification are drawn to ATBS, and/or any further combination thereof with an associative monomer and/or acrylic acid, the instantly claimed amphoteric polymer is not limited to ATBS as independent claim 1 merely requires at least one monomer derived from a sulfonic acid and/or salt thereof and at least one associative cationic monomer of formula (I), wherein formula (I) is not limited to a specific monomer, but rather encompasses a variety of associative cationic monomers corresponding to components falling within the extensive listing of compounds for R1, R2, R3 and X.
Applicant asserts the best results are obtained for the polymers according to the invention according to Tables 3 to 6.
Applicant acknowledges the fluid described in Quan displays good performance in terms of high-temperature and salinity resistance.
Applicant asserts Quan provides very few details regarding the preparation of the polymers and does not explicitly disclose whether they were prepared in the absence of surfactants.
Although Quan does not explicitly disclose whether the polymers were prepared in the absence of surfactants, Quan does indeed disclose wherein the polymer forming components are mixed and heated according to a series of steps within the disclosed preferred embodiment on page 3 of the translation. The reference also fails to mention a requirement for a surfactant added to the mixture during these steps. As such, the Office maintains the absence of a surfactant during the preparation steps explicitly disclosed by Quan et al. would indeed be obvious to one having ordinary skill in the art since such is not explicitly required and/or used in the disclosed preparation process and it has been held the omission of an element and its function is obvious if the function or element is not desired. See Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). See MPEP 2144.04 II. A.
Applicant further asserts Quan does not disclose a content of at least 70 mol% ATSB. Applicant asserts Quan discloses a molar percent range of 43.47-72.72 and such a teaching is insufficient to render obvious Applicant’s claimed range of at least 75 mol%. Applicant asserts there is no overlap whatsoever between the cited prior art range and the claimed range, and, thus, the claims are not obvious.
The Examiner respectfully disagrees. Since the water soluble copolymer of Quan et al. is used in the manner as is Applicant’s, and, further, as noted by Applicant, “displays good performance in terms of high-temperature and salinity resistance,” one having ordinary skill in the art would indeed recognize through routine experimentation wherein a presence of the monomer derived from a sulfonic acid and/or a salt thereof of at least 75 mol% is optimal since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). Additionally, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). (“A simple case in in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6 lbs/ft and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”)
It is the position of the Office that the instant specification fails to explicitly establish the instantly claimed mole percent of at least 75 mol% as critical and it is unclear if any unexpected results are achieved by providing for such.
The Office acknowledges the polymer comparisons of Table 1 from the specification, noting wherein polymer 6’ of Table 1 is “relatively close” to polymer 9 of Quan.
Applicant asserts compared to polymer 6,’ the polymers according to the present invention exhibit improved performance under aging conditions and the rheology modifying and suspension effect are improved with zero or very low sedimentation.
Applicant asserts that Quan does not suggest that such a molar percentage of monomers derived from sulfonic acid could improve these properties and increasing the molar percentage of ATBS is far from obvious.
The Examiner notes, however, Quan indeed suggests the use of the disclosed polymer as a rheology modifier; the reference further provides for an upper percent thereof of 72.72%, which the Office considers as mathematically close to Applicant’s at least 75 mol%, i.e., 72.72% is closer to 75% than 70%. Since one of ordinary skill in the art is seeking to obtain the optimal rheology performance when using the rheology modifier of Quan, it is the position of the Office a determination of at least 75 mol% would indeed be obvious.
Furthermore, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) wherein data showing improved alloy strength with the addition of 2% rhenium did not provide evidence unexpected results for the entire claimed range of about 1-3% rhenium. See MPEP 716.02(d)
Conclusion
THIS ACTION IS MADE FINAL. 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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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, 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
01/16/26