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.
Claims 6, 9, 11 and 14-20 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.
Claim 6: “the incomplete mixing” lacks antecedent basis.
Claim 9: “…the mixed fluids” lack antecedent basis. Also unclear is whether the mixed fluids herein is upstream or downstream of the mixer.
Claims 11 and 17: “the junction” lacks antecedent basis.
Claim 14: “the fluid” and “the combined first and second fluids” lack antecedent bases.
Claim 19: “the generator” lacks antecedent basis.
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 1-13 and 19 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility.
Independent claims 1 and 14 recite, inter-alia, “a location in the pipeline where inhomogeneities in the fluid …” The claims also recite “generating electricity by flowing the combined flow past the blades of the mixing unit.” Applicant’s specification at [0003] describes, “In one application of this approach, a mixing unit installed in a pipeline interrupts development of scale and biofouling by homogenizing the fluid in a pipeline where flow conditions (e.g., low velocities) have led to the separation of oil and water produced from a subsurface formation. This separation can be particularly problematic in situations where saline rich produced is stagnant or flow at very low velocities.”
The ”mixing unit” having “blades” is rotated by the energy of the fluid flowing in the pipeline to generate electricity. The electricity thus produced is also suggested for powering chemical dosing station in [0039]. Therefore, there must be sufficient flow in the fluid to overcome the friction and inertia of the rotating blades to make the mixer work in the viscous “formation” liquid (crude oil is very viscous), and in addition, sufficient energy in the flowing fluid to overcome the electrical load the generator is connected to. This is contradicted by the fact that the location of the unit is wherein the fluid flow is of low velocity or stagnant. This raises a problem of the system not working as desired. That is, when there is insufficient flow or the fluid is stagnant, the mixer blades cannot rotate because there is not enough energy in the fluid for that to happen, which in turn cannot produce any electricity or make the fluids to mix. A “catch 22” situation. Thus the claims as drafted appear to be unworkable.
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.
Claim(s) 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over CN 116336391.
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CN-391 teaches as seen in Fig. 1 a mixer with blades installed in an oil pipeline for the express purpose of mixing the fluids in to reduce corrosion and scaling, and method of doing it. See claim 1 of the reference. Regarding the location as to where to install the mixer in the pipeline, such location determination is implied by the reference, or it would have been obvious to one of ordinary skill do so where the problem exists. Regarding the location being downstream of two combined liquid stream (not properly claimed as of now,) this also would have been obvious to one of ordinary skill as the desired location wherein the liquid streams are expected to be mixed.
Claims 15 and 16 only recite conditions in the pipeline that can cause the inhomogeneities, which are not independently patentable.
"[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)
Claim(s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Schlabach et al (US 8,360,720) and CN 116199349, with further evidence from Lightening Master, In-Pipe Turbine Generator October 12, 2016 (https://lightningmaster.com/2016/10/12/).
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Claims 1, 10, 11, 13, 14, 17, 19 and 20: Applicant has incorporated Schlabach by reference in the specification in [0020], which means applicant is knowledgeable about the contents of this reference. Schlabach teaches installing this in fluid pipelines to generate electricity. Since the flow rotates the blades, it will also inherently mix the fluid in that process. Thus when this device is installed in a formation pipeline, it will mix the fluids in the pipeline and thereby would reduce any scale or corrosion problems as claimed, which is inherent.
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986)
Schlabach does not teach locating the device and adding corrosion inhibitors, etc., as claimed.
CN-349 teaches a process wherein a mixer is installed in an formation pipeline to add corrosion inhibitors into fluids and mix the fluids upstream of the mixer. See details in Fig. 1 copied herein with annotations. See claim 1 of the reference for details.
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Adding corrosion and scale inhibitors in oil pipelines is also well known for controlling corrosion and scale formation. Therefore, it would have been obvious to one of ordinary skill to use the teachings of CN-349 in the teaching of Schlabach to also add the corrosion inhibitors in the line to use the advantage of Schlaback in mixing the fluids in the pipeline, thereby controlling any corrosion problems. See also the rationales A-G for combining in MPEP 2143.
The location of the mixer would be implied by the references because one would do so at the location where it is necessary to have the liquids mixed, whether mixing two merging liquids or wherein the liquids have the undesirable tendency of separating, as shown in rejection 1.
Claim 2-7, 9, 15, 16, 18 only defines the location and the conditions causing inhomogeneity, which are not independently patentable because they are not inventive.
Claim 8: actual location of the mixer downstream of a joint, within 50-500 meters, in the pipeline would be based on convenience and is not a patentable invention, unless otherwise shown.
Claim 12 and 19: since Schlabach produces electricity, it would have been obvious to one of ordinary skill in the art to use that energy to drive the dosing pumps, etc. for chemical injection. See the Lightening Master article for evidence.
Alternately, it would have been obvious to one of ordinary skill in the art to use the device of Schlabach in the teaching of CN-349 so that the energy for injecting the chemicals could be derived from the generator as well.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379, 2020 USPQ2d 10706 (Fed. Cir. 2020); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777
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