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 § 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 1-8 and 19-20 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.
The claims are indefinite and incomplete.
As to claims 1-8:
The applicants amended the claims to recite that the buildup removal system is configured to stop a flow of the contents.
The applicants also amended the claims to recite that the buildup removal system is configured to allow a flow of the contents at a constrained rate and at unconstrained rate.
The amended claims however fail to recite any structure to stop the flow of the contents or allow the flow of the contents at a constrained rate and at unconstrained rate.
The claims merely recite that the buildup removal system comprises a conduit and a heating mechanism.
It is not clear how a system comprising only a conduit and a heating mechanism can be configured to stop the flow of the contents or allow the flow of the contents at a constrained rate and at unconstrained rate.
It appears that the claims are incomplete.
The claims could not be understood in view of the specification since the specification fails to recite any structure to stop the flow of the contents or allow the flow of the contents at a constrained rate and at unconstrained rate.
The claims are further indefinite because it is not clear from claim 1 whether or not “a flow of the contents” and “a flow of the contents in the conduit” recited by claim 1 are the same.
The claims are further indefinite because it is not clear whether or not “a flow of the contents in the conduit” recited by the first “wherein” clause of claim 1 and “a flow of the contents in the conduit” recited by the second “wherein” clause of claim 1 are the same.
Claims 19-20 have a similar problem since the claims recite stopping/allowing a flow of contents within the conduit, but fails to recite any structure for it.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 and 13-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The applicants amended the apparatus claims to recite that the buildup removal system / the subsea oil and gas system is configured to stop the flow of the contents or allow the flow of the contents at a constrained rate and at unconstrained rate.
The original disclosure fails to provide an adequate description of how the system is configured to stop the flow of the contents or allow the flow of the contents at a constrained rate and at unconstrained rate.
The original disclosure is silent regarding any structure needed to stop the flow of the contents or allow the flow of the contents at a constrained rate and at unconstrained rate.
The applicants also amended the method claims to recite stopping the flow of the contents and allowing the contents to flow at a constrained rate and at unconstrained rate.
The original disclosure is silent regarding any structure needed to stop the flow of the contents or allow the flow of the contents at a constrained rate and at unconstrained rate.
The original disclosure merely states at [0048] “Prior to applying heat, a flow from the subsea manifold or subsea well may be turned off to create a relatively stationary portion of crude oil, natural gas, and/or water in a position corresponding with the heat application.”
The original disclosure fails to provide an adequate disclosure of any structure or steps to stop the flow.
The same is true for the allowing the flow of the contents at a constrained rate and at unconstrained rate.
With respect to the “constrained rate” the specification merely states at [0042]: “Flow may then be continued at a constrained rate so that the heater may raise passing contents to a base maintenance temperature until the buildup 230 is cleared.” and at [0050]: “In an embodiment, the flow 341 may continue at a constrained rate so that the applied heat 331 can raise passing fluid to a base maintenance temperature until the buildup is cleared from the riser portion.”
The original disclosure fails to provide an adequate disclosure of any structure or steps to allow such.
Further, it appears that the original disclosure is silent regarding “unconstrained rate”.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2010/135772.
WO 2010/135772 teaches a system as claimed.
The system comprises:
A conduit 14;
A heating element 10;
And an offshore platform.
See at least Figure 1 and the related description.
The conduit is disclosed as comprising a lower portion and the riser portion (at least Figure 1 and the related description), with the riser portion connected to the platform and the lower portion connected to manifolds connected to sub-sea wells.
The heating element is disclosed as applying the heat to the lower portion.
The system is disclosed as for preventing removing the buildup of hydrates from the conduit.
The heating is disclosed to the temperatures above melting point of the buildup.
The method comprising applying heat to the lower portion of the conduit to raise the temperature of the content of the conduit above the melting point of the hydrates to remove the buildup.
See Background, Summary of the invention and Detailed description of the invention, Figure 1 and the related description.
As to newly introduced limitations of “the buildup removal system is configured to stop a flow of the contents”, and the buildup removal system is configured to allow a flow of the contents at a constrained rate and at unconstrained rate:
Since WO 2010/135772 teaches a system comprising the structural limitations recited by the claims it meets the limitations recited by “configured to” perform the intended functioning recited by the claims or the invention is not disclosed/claimed in the correspondence with the requirements of the 35 USC 112(a).
Further, WO 2010/135772 also teaches that the system also comprises flow controls, pressure controls, pumps, motors, valves, etc. (at least the first paragraph of Detailed Description of the Invention at page 6). Thereby, the system of WO 2010/135772 is fully capable of performing the intended functioning recited by the “configured to” clauses of claim 1.
As to claim 8:
WO 2010/135772 teaches heating from the dip sea temperatures (conventionally 4C) to above the melting point of hydrates (above 20C). Such clearly envisages the temperatures recited by the referenced claim.
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.
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.
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.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2010/135772 in view of EP 0250026.
WO 2010/135772, as applied above, teaches a system as claimed except for the specific recitation that the platform is configured to divide the heated content into quantities oil gas and water and export the separated quantities to land via a subsea pipeline.
However, such appears to be the recitation of the conventional functioning of the platform, as evidenced by EP 0250026 (see at least column 1, lines 11-23).
It would have been obvious to an ordinary artisan at the time the invention was filed to configure the platform in WO 2010/135772 to conduct the conventional functioning of the platform recited by EP 0250026.
Claim(s) 9-10 and 13-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2010/135772 in view of any one of Pakkan et al (US 2022/0018230), GB 2582322 and Settouti et al (US 2017/0336010).
WO 2010/135772 teaches a method.
The method utilizes a system comprising:
A conduit 14;
A heating element 10;
And an offshore platform.
See at least Figure 1 and the related description.
The conduit is disclosed as comprising a lower portion and the riser portion (at least Figure 1 and the related description), with the riser portion connected to the platform and the lower portion connected to manifolds connected to sub-sea wells.
The heating element is disclosed as applying the heat to the lower portion.
The system is disclosed as for preventing removing the buildup of hydrates from the conduit.
The heating is disclosed to the temperatures above melting point of the buildup.
The method comprising applying heat to the lower portion of the conduit to raise the temperature of the content of the conduit above the melting point of the hydrates to remove the buildup.
See Background, Summary of the invention and Detailed description of the invention, Figure 1 and the related description.
As to newly introduced limitations of “stopping a flow of the contents”, “applying heat to a section of the lower portion to heat contents within the section of the lower portion of the conduit while the flow of the contents within the conduit is stopped”, “allowing the heated contents to flow into the riser portion at a constrained rate” and “allowing a flow of the contents in the conduit at an unconstrained rate”:
WO 2010/135772 does not specifically teach stopping of the flow of contents and conducting heating when the flow is stopped.
However, Pakkan et al, GB 2582322 and Settouti et al all evidence that during operation of the subsea pipe lines the flow can be slowed and stopped for different reasons (both planned and unplanned), such, for example, maintenance and shutdown.
Pakkan et al, GB 2582322 and Settouti et al also teach that when the flow of production fluid stops for any reason, the temperature of the fluid left within the pipeline will decrease due to thermal exchange with the much colder surrounding seawater.
Pakkan et al, GB 2582322 and Settouti et al also teach when the flow is slowed or stopped for any reason, there is a risk that the temperature of the production fluid within the pipeline drops below the wax appearance temperature (WAT), or below other thresholds at which other solid materials will coalesce from oil or gas.
Pakkan et al, GB 2582322 and Settouti et al also teach that to mitigate the indicated problem is known to heat the pipelines to prevent plugging.
See at least pages 1 and 2 of GB 2582322; Background of the Invention of Settouti et al; and [0001-19] of Pakkan et al.
It would have been obvious to an ordinary artisan at the time the invention was filed to provide heating in the method of WO 2010/135772 when the flow of the contents is slowed or stopped for any reason (such maintenance or shotdown) to prevent plugging since Pakkan et al, GB 2582322 and Settouti et al teach heating as a known method for preventing plugging during the periods of slowing/stopping the flow.
As to the step of “allowing the heated contents to flow into the riser portion at a constrained rate” such step would be obviously present due to the presence of the buildup in the riser formed during the period the flow is stopped.
As to the step: “allowing a flow of the contents in the conduit at an unconstrained rate”: the referenced step would be obviously present when the functioning of the installation returns to the normal.
As to claim 16:
WO 2010/135772 teaches heating from the dip sea temperatures (conventionally 4C) to above the melting point of hydrates (above 20C). Such clearly envisages the temperatures recited by the referenced claim.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2010/135772 in view any one of Pakkan et al (US 2022/0018230), GB 2582322 and Settouti et al (US 2017/0336010) as applied to claim 17 above, and further in view of EP 0250026.
Modified WO 2010/135772, as applied above, teaches a method as claimed except for the specific recitation that the platform is configured to divide the heated content into quantities oil gas and water and export the separated quantities to land via a subsea pipeline.
However, such appears to be the recitation of the conventional functioning of the platform, as evidenced by EP 0250026 (see at least column 1, lines 11-23).
It would have been obvious to an ordinary artisan at the time the invention was filed to configure the platform in WO 2010/135772 to conduct the conventional functioning of the platform recited by EP 0250026.
Response to Arguments
Applicant's arguments filed 09/29/2025 have been fully considered but they are not persuasive.
The applicants amended the claims and allege that the claims are allowable.
The amended claims have been examined and are the subject of the rejections presented above.
The claims are indefinite, not supported by the original disclosure and anticipated/obvious over the prior art.
In contrast, to the applicants’ allegation WO 2010/135772 still anticipate claims 1-8.
As to newly introduced limitations of “the buildup removal system is configured to stop a flow of the contents”, and the buildup removal system is configured to allow a flow of the contents at a constrained rate and at unconstrained rate:
Since WO 2010/135772 teaches a system comprising the structural limitations recited by the claims it meets the limitations recited by “configured to” perform the intended functioning recited by the claims or the invention is not disclosed/claimed in the correspondence with the requirements of the 35 USC 112(a).
Further, WO 2010/135772 also teaches that the system also comprises flow controls, pressure controls, pumps, motors, valves, etc. (at least the first paragraph of Detailed Description of the Invention at page 6). Thereby, the system of WO 2010/135772 is fully capable of performing the intended functioning recited by the “configured to” clauses of claim 1.
Claims 19-20 are still obvious over WO 2010/135772 in view of EP 0250026 for the reasons provided above and because EP 0250026 evidences that the platforms are configured to divide the heated content into quantities oil gas and water and export the separated quantities to land via a subsea pipeline (see at least column 1, lines 11-23).
It would have been obvious to an ordinary artisan at the time the invention was filed to configure the platform in WO 2010/135772 to conduct the conventional functioning of the platform recited by EP 0250026.
Amended claims 9-10 and 13-18 have been addressed in the rejections above.
The teachings of Pakkan et al (US 2022/0018230), GB 2582322 and Settouti et al (US 2017/0336010) have been used to show that the amended claims are obvious over the prior art.
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 ALEXANDER MARKOFF whose telephone number is (571)272-1304. The examiner can normally be reached 9:00 am - 5:30 pm.
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/ALEXANDER MARKOFF/Primary Examiner, Art Unit 1711