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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/25 has been entered.
Response to Amendment
The Amendment filed 12/23/25 has been entered. Claims 1-8, 11-13, and 16-28 remain pending in the application, of which claims 4, 7, 8, and 17-28 are withdrawn. Some elements from claims 3, 5, and 16 were non-elected (see Applicant’s Response to Election/Restriction filed 5/19/25). Claims 9 and 10 have been canceled. As such, the claims being examined are claims 1-3, 5, 6, 11-13, and 16.
Claim Objections
Claim 11 is objected to because of the following informality:
On line 1 of claim 11, “the treatment fluid of claim 9” should recite “the treatment fluid of claim 1” since claim 9 has been canceled and incorporated into claim 1.
Appropriate correction is required.
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.
Claims 1-3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Von Krosigk et al. (US 2002/0132740- cited previously) in view of Quintero et al. (US 2018/0079951- cited previously). With respect to independent claim 1, Von Krosigk discloses a treatment fluid for cleaning oil sludges (Abstract and [0001]), comprising: an emulsion of solvent-in-water (Abstract, [0013], [0022], [0028], and [0033]);
a surfactant (Abstract, [0013], and [0031]); and an oxidizer in the water phase (Abstract, [0022], [0028], and [0034]).
Regarding claim 1, Von Krosigk discloses a treatment fluid for “cleaning well bores by removing sludges, muds, mud solids, paraffin and other well drilling residue solids” ([0036]). However, he fails to expressly disclose wherein the treatment fluid “dissolves tar for removal,” as instantly claimed. Quintero recites a treatment fluid for dissolving organic deposits from a wellbore, where the organic deposits include “paraffins, asphaltenes, tar, sludge, schmoo, and combinations” (Abstract and [0022]). It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to consider applying the treatment fluid disclosed by Von Krosigk in a deposit containing tar, as taught by Quintero, since it amounts to nothing more than employing a known technique to a comparable device in a comparable situation, i.e., cleaning organic deposits from well bores, and it therefore would have been obvious for a person having ordinary skill in the art at the time of the invention since it has been taught “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill... [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR at 1396 Furthermore, in view of the overlapping types of organic deposits disclosed by Von Krosigk and taught by Quintero, a person having ordinary skill in the art before the effective filing date of the claimed invention would find it obvious to try the composition disclosed by Von Krosigk for the organic deposits taught by Quintero.
Moreover, since Von Krosigk discloses the same composition as claimed, the material, if exposed to tar would naturally act in the same manner as claimed, i.e., it would be capable of dissolving the tar. If there is any difference between the composition of Von Krosigk and that of the instant claims, the difference would have been minor and obvious insofar as because it has been held "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775,227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934). Further regarding claim 1, Von Krogisk discloses wherein the surfactant has a hydrophobic-hydrophilic balance (HLB) of greater than about 12 (Abstract, [0013], and [0031]). (For example, octyl phenol ethoxylate generally has an HLB value between 13 and 14.) Furthermore, 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 HLB as critical and it is unclear if any unexpected results are achieved by using the instantly claimed HLB. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claim 2, Von Krosigk discloses wherein the solvent comprises a single solvent or a mixture of solvents (Abstract and [0033]). With respect to depending claim 3, Von Krosigk discloses wherein the solvent comprises xylene, toluene, or any combinations thereof (Abstract and [0033]). With respect to depending claim 11, Von Krogisk discloses wherein the surfactant is present from “approximately 1 to 40 weight percent” ([0028]). Although silent to wherein the amount of surfactant is “about 0.1 vol % to about 5 vol %,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a surfactant amount as claimed insofar as because 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)
Claims 5, 6, and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Von Krosigk et al. (US 2002/0132740- cited above) in view of Quintero et al. (US 2018/0079951- cited above), and further in view of Hull et al. (US 2017/0066959- cited previously).
With respect to depending claims 5 and 6, Von Krosigk discloses a treatment fluid for treating downhole formations comprising an oxidizer. However, he fails to expressly disclose wherein the oxidizer may be that which is claimed. Hull teaches a treatment fluid for treating downhole formations comprising an oxidizer, wherein the oxidizer may be a sodium bromate (Abstract and [0007]). Replacing the oxidizer disclosed by Von Krosigk with the oxidizer taught by Hull is but a simple substitution of one known equivalent filter for another, performing the same function for the same purpose. It would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to make this simple substitution as it has been held “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR at 1395 (citing United States v. Adams, 383 US 39, 50-51 (1966)).
With respect to depending claims 12-15, the combination of Von Krosigk and Hull teaches wherein the oxidizer may be sodium bromate (Abstract and [0007]). Since the combination teaches the same composition as claimed (i.e., sodium bromate), the material would naturally act in the same manner as claimed, i.e., it would be active at the temperatures instantly claimed. If there is any difference between the compositions, the difference would have been minor and obvious insofar as because it has been held "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775,227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
With respect to depending claim 16, the combination of Von Krosigk and Hull discloses wherein: the solvent comprises xylene (Abstract and [0033]); the surfactant comprises an ethoxylated surfactant (Abstract and [0031]); and the oxidizer comprises sodium bromate (Hull- Abstract and [0007]). Regarding claim 16, Von Krosigk discloses wherein the surfactant may be an ethoxylated nonionic surfactant (Abstract and [0031]). With regard to the materials of the Markush group, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the surfactant.
Response to Arguments
Applicant's arguments filed 12/23/25 have been fully considered but they are not persuasive.
Applicant argues that Quintero cannot be relied upon as evidence for the principle that it is well known in the art that a cleaning fluid for treating downhole oil may alternatively be employed for dissolving downhole tar. The argument is moot inasmuch as Quintero is no longer being relied upon as evidence, but rather as a teaching and, as such, new rationales and lines of reasoning have been provided (see above).
Applicant argues that Von Krogisk “does not disclose octyl phenol ethoxylate but does disclose nonyl phenol ethoxylate” and therefore does not anticipate a “HLB of greater than about 12,” as instantly claimed. The Examiner finds this argument unpersuasive. Von Krogisk discloses “ethoxylated nonionic surfactants selected from the group consisting of condensation products of ethylene oxide with… octyl phenol or other phenols.” Applicant additionally argues that Von Krogisk “does not appear to place any importance or value on the HLB value of any chosen surfactant. The Examiner points out that although the instant specification recites a range it fails to explicitly establish the instantly claimed HLB as critical and it is unclear if any unexpected results are achieved by using the instantly claimed HLB.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AVI T. SKAIST whose telephone number is (571)272-9348. The examiner can normally be reached M-F 9:30-6.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674