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 Objections
Claims 3 and 6 objected to because of the following informalities: In claim 3, it teaches polyisobulitene, where it seems that polyisobutylene was meant to be claimed.
In claim 6, line 3, “or” should be changed to “and” for proper Markush grouping.
. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because “Use of” does not fall into the category of a method (or other category), since no method steps are claimed, and ‘configured to be applied” is not a method step (see MPEP 2173.05 (q).
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 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 1-8 are rejected since they are attempting to claim without any process steps. The term “use of” is not a process step (see MPEP 2173.05 (q).
Claim 1 is further rejected for teaching the term “more specifically”. It is not clear if what follows is a part of the claimed subject matter or not (see MPEP 2173.05 (d). Dependent claims fall herewith.
In claims 4 and 5, there is no antecedent basis for “the flowing oil”.
In claim 7, the scope of the term “high” in high molecular weight is not clear. Applicants’ specification at (0045) teaches a range of 4 to 8 MM, which is not indicative of high molecular weight.
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.
Claim(s) 1 – 5 and 8 are rejected under 35 U.S.C. 102 (a1) as being anticipated by WO 03/004146.
Again, with respect to the current claims, “use of” does not denote an actual process.
Regarding claim 1, WO ‘146 teaches a microencapsulated drag reducing polymer which has a thermosensitive external membrane. The drag reducing polymer can comprise various polymers including polyisobutylene (see Core Material, page 10 first paragraph), which can be used in hydrocarbon streams. The external membrane (shell) is thermosensitive, since it can be melted or removed by microwave heating (page 17, lines 17-18).As noted in the above 35 USC 101 and 112 “use of” and “configured to” are not process limitations. Further, with respect to “configured to”, the microcapsule is in a form in which it can be applied to oil production fields.
Regarding claim 3, WO ‘146 teaches that the drag reducing polymer can have very high molecular weights on the order of 10 million weight average (page 11, line 9). Regarding, claim 2, as taught by applicant’s above claim 3, high molecular weight polyisobutylene would have the viscosity claimed.
Regarding claims 4 and 5, WO ‘146 teaches that the external membrane is impermeable to the drag reducing core polymer (Page 16, first paragraph). WO ‘146 also teaches the use of waxes, such as Carbowax (which melts around 66 degrees C) as the shells (page 16, second paragraph), wherein such low melting temperature would cause the shell to melt in an oil producing environment above 70 degrees C., and is thus configures to do so.
Regarding claim 8, WO ‘146 teaches shell materials that can withstand high pressure (page 16). It is noted that the current claim or specification does not give a range for the high pressure, so as to be distinguishing.
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.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over WO 03/004146
Regarding claim 6,WO ‘ 146 teaches that the shell can be a wax, polybutylene or polyethylene which would qualify as paraffins, which can be in liquid form (page 16, lines 1-5). Although not exemplifying that the paraffins are in oil form, it would be obvious to one of ordinary skill to use such as an oil, given the teaching that these compounds may be used in liquid form
Claim(s) 1-5 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cao (US 2021/0230478 in view of WO 03/004146.
Regarding claim 1, Cao teaches utilizing microcapsules which may comprise an internal drag reducing agents (0028 and 0062) and external matrix materials which would be subject to degradation (0068). The microcapsules can be used in oil production fields (0159). Cao teaches that the external membrane can be a coating such as xanthan gum (0068) which has a melting point of 64 degrees C, and is thus thermosensitive. Cao differs from the present invention in that the drag reducing agent is not specifically disclosed as a polymer. WO ‘146 teaches microencapsulated drag reducing agents which can be use in conduits transporting hydrocarbons (page 2, lines 12-14), which would thus be inclusive of oil producing conduits. . The drag agent of WO ‘146 is a drag reducing polymer which can comprise various polymers including polyisobutylene (see Core Material, page 10 first paragraph). It would be obvious to one of ordinary skill in the art to utilize the drag reducing polymers of WO ‘146 as the drag reducing agent of Cao, given the teaching of WO ‘146 that such are useful in oil transportation conduits. One of ordinary skill in the art would expect that such drag reducing polymers would be deployed in the invention of Cao with a reasonable expectation of success in achieving drag reduction.
Regarding claim 3, WO ‘146 teaches that the drag reducing polymer can have very high molecular weights on the order of 10 million weight average (page 11, line 9). Regarding, claim 2, as taught by applicant’s above claim 3, high molecular weight polyisobutylene would have the viscosity claimed.
Regarding claims 4 and 5, Cao teaches the use of external membranes such as Xanthan gum 0068) which melts around 64 degrees C, wherein such low melting temperature would cause the shell to melt in an oil producing environment above 70 degrees C., and is thus configures to do so.
Regarding claim 8, Cao teaches membrane materials that can withstand high pressure (0068). It is noted that the current claim or specification does not give a range for the high pressure, so as to be distinguishing.
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cao (US 2021/0230478 in view of WO 03/004146 as applied to claims 1-5 and 8 above, and further in view of Chang (US 2022/0348815.
Cao in view of WO ‘146 is described above, such combination fails to teach the use of gellan as the external membrane. Cao teaches that the external membrane may be a polysaccharide, including various gums (0068). Chang teaches a method of utilizing microcapsules for delivering chemicals in wellbores (0001). Chang teaches that the external membrane of the microcapsule can be gellan gum (0014) which is a polysaccharide. Given the teaching of Cao that polysaccharides and gums can be used as the external membrane in the microcapsules placed in wellbores, it would be obvious to one of ordinary skill in the art to utilize gellan as the external membrane in Cao, since one of ordinary skill in the art would have a reasonable expectation of success that the gellan would act as a suitable encapsulant. The simple substitution of one known element for another, in this case would obtain predictable results (KSR Rationale B). Again, with respect to “use of” or “is used”, such does not denote an actual process step.
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
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