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 .
Response to Request for Reconsideration
Applicant’s request for reconsideration has been considered but is not deemed persuasive. The rejections and objection are maintained below.
Claim Objections
Claim 9 is objected to because of the following informalities: The scope of what is defined in the claim is not clear. Appropriate correction is required. Claim 9 teaches a group -NH2 which by itself is not an amine. The scope of this group is further not clear since the amine RNH2 is also claimed. A further definition, or what is attached to the group should be provided.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 5 and 12 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over (Michel US 2010/0022425).
Regarding claim 1, Michel teaches a corrosion inhibition composition which may be used in non-aqueous or aqueous functional fluids (0061). Michel teaches that the corrosion inhibiting compositions can be used in drilling oils (0091) Although not specifying well drilling fluids, such would render the use in all types of drilling oils, including those used in wellbores obvious to one of ordinary skill in the art, particularly, since corrosion is a pertinent problem in wellbore operations. Michel teaches that the fluids therein may comprise epoxidized soy bean oil (0097). As noted by applicant in (0052) of the specification soy bean oil has a structure having 1-4 unsaturated bonds, thus it would be obvious to one of ordinary skill in the art that at least one of the unsaturated bonds would be epoxidized. Such would obviously or inherently have corrosion inhibiting properties as taught by applicant. Regarding claim 5, such epoxidized soy bean oil would be epoxidized on the hydrocarbon chain meeting (ii) of claim 5 (0052 of the specification shows a C17 chain).
Regarding claim 12, the composition contains further corrosion inhibitors (0008).
Regarding claim 14, the claimed manually, automatically, batch or continuous covers all of the ways the fluid may be added.
Regarding claims 15, 16 and 18 the teaching of a drilling oil renders a well obvious to one of ordinary skill (0091). As known in the art, wells contain various levels of oxygen, sodium chloride and calcium chloride and have temperatures up to 100 degrees C.
Regarding claim17, Michel teaches that the surface is a metal (abstract).
Regarding claims 19 and 20, the composition would obviously prevent corrosion at a greater rate than not using a corrosion inhibitor. Regarding claim 20, one of ordinary skill would vary the amount of corrosion inhibitor added to the drilling oil in order to reduce corrosion up to 100%.
Claim(s) 1, 2, 7-9, 11, 12 14 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Miksic (US 2004/0144957) in view of Biswas, Synthesis of Diethylamine functionalized Soybean oil, J. Agric.Food Chem, 2005, vol. 53, 9485-9490.
Regarding claims 1, 9 and 15, Miksic teaches a composition for use in oil well drilling and wellbores which can comprise soybean oil (see abstract). Miksic fails to specifically teach a compound within the scope of Formula I or II in claim 1. Biswas teaches the formation of diethyl amine functionalized soybean oil by reaction of an amine with epoxidized soybean oil (page 9485, column 2). Biswas teaches that reaction of the amine with the epoxy groups produces branching of the soybean oil, leading to improved thermal, oxidative and low temperature stability compared to unmodified soybean oil (page 9486, column 1) . It would thus be obvious to one of ordinary skill in the art to utilize the amine functionalized soybean oil in place of the soybean oil of Miksic in order to obtain the improvements in thermal, oxidative and low temperature taught by Biswas.
Regarding claim 2, Miksic teaches the composition is highly effective at levels of 5 to 15 ppm.
Regarding claim 7, as noted in paragraph a90052) of the current specification, the soybean oil has R groups of 17 carbon atoms., and as taught by Biswas, at least one epoxide is opened by an amine (page 9486, column 1).
Regarding claim 8, Biswas teaches that 88.4% of the epoxide rings are opened by the amine (Page 9459, column 1).
Regarding claim 11, Example 3 of Miksic teaches a composition which can comprise 60% of compounds which can be classifies as corrosion inhibitors, solvents and synergists.
Regarding claim 12, Miksic teaches additional corrosion inhibitors (claim 1).
Regarding claim 14, such covers all manner of adding the composition to the wellbore system, and is thus rendered obvious to one of ordinary skill in the art.
Regarding claim 16, Miksic teaches protection against systems comprising carbon dioxide and hydrogen sulfide (last table of page 3).
Miksic teaches protection against metals (0001).
Regarding claim 18, although Miksic does not specify that the system is at 0 to 100 degrees C, it is typical of wellbores to have temperature up to or above 100 degrees C, and utility at such temperatures would be obvious to one of ordinary skill in the art.
Regarding claim 19, it would be obvious that corrosion would be prevented at a higher rate in a system containing a corrosion inhibitor, as compared to one that does not have an inhibitor.
Regarding claim 20, Miksic teaches corrosion reduction of 92.3 to 98.7% (0020).
Claims 3, 4, 6 and 13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 7/29/2026 have been fully considered but they are not persuasive.
Regarding applicant’s arguments concerning the objection to the use of -NH2 as an amine in claim 9. The argument seems to indicate ammonia is being considered an amine, however ammonia is not an amine which is an organic compound, but an inorganic compound.
Applicant argues that Michel does not teach the epoxidized soybean oil is a corrosion inhibitor. It has clearly been held that prior art is not distinguished if it is silent to an inherent characteristic (MPEP 2112 III). The epoxidized soybean oil must have the same corrosion inhibiting characteristics as being claimed, or else the current claims would not be valid. Rationale different from applicant to combine references does not render claims non-obvious (MPEP 2144 IV). Furthermore, a new use of an old composition does not distinguish over the prior art (MPEP 2112 I). The claims rejected by Michel do not contain any features to distinguish the current composition from that of Michel.
Contrary to applicant’s arguments, the soybean oil is not being protected from corrosion, but the metal is being protected.
Regarding applicant’s arguments concerning selecting a species from a genus, in this case only 14 oils are taught, which is so small such that the soybean oil would be instantly envisaged by one of ordinary skill in the art
Applicant has argued that hindsight was used in the rejection, however as noted in MPEP 2145, Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
Contrary to applicant’s arguments, aluminum is used in wellbores as noted below in a Google Search
Use of Aluminum in Wellbores
Yes — aluminum and its alloys are used in some wellbore applications, but they are not the primary structural metal for drilling strings or casings; steel remains the dominant choice due to higher strength and durability in harsh subsurface conditions.
Regarding the rejection of Miiksic in view of Biswas, applicant argues that the compound disclosed by Biswas is not specified as having corrosion prevention properties. Again, It has clearly been held that prior art is not distinguished if it is silent to an inherent characteristic (MPEP 2112 III). The diethylamine-functionalized soybean oil soybean oil of Biswas must have the same corrosion inhibiting characteristics as being claimed, or else the current claims would not be valid. Applicant has argued that there must be a reason to combine references. The rejection provides a clear rationale that the use of the compound of Biswas instead of the soybean oil of Miksic provides improved thermal, oxidative and temperature stability, providing a clear motivation for making the substitution. Furthermore, the reason for combining references need not have the same rationale as used by the applicant (MPEP 2144 IV)., in this case use as a corrosion inhibitor.
Applicant’s arguments are thus not persuasive.
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 PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
