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 22 and 23 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. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The unit “g/cm2” in each of claims 22 and 23 is used to define the bulk density of the graphene and boron nitride,” while the accepted units are “g/cm3.” The units render the claims indefinite because the specification does not clearly redefine the units of bulk density as such.
Claim 22, along with claim 23, currently dependent therefrom, is 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 22 recites the limitation "The method of claim 22." There is insufficient antecedent basis for this limitation in the claim. A claim cannot depend upon itself; it appears claim 22 may be intended to be dependent upon new dependent claim 21, wherein graphene is recited.
Claim 22 recites “where the graphene has a bulk density.” Applicant, however, has not positively required the particles to indeed be graphene, and, as such, it is unclear if graphene particles are required. Applicant is advised to amend claim 22 to require -where the particles are graphene and where the graphene has a bulk density-.
Claim 23 is 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 23 recites “The method of claim 22” and refers to “the boron nitride.” Although claim 22 is assumed to depend upon claim 21, wherein boron nitride is recited, it appears claim 23 was intended to depend upon claim 21. Appropriate correction is required.
Claim 23 recites “where the boron nitride has a bulk density.” Applicant, however, has not positively required the particles to indeed be boron nitride, and, as such, it is unclear if boron nitride particles are required. Applicant is advised to amend claim 23 to require -where the particles are boron nitride and where the boron nitride has a bulk density-.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Golomb et al. (US 2010/0243248 – cited previously) in view of Prud’Homme et al. (US 2009/0054272 – cited previously).
With respect to independent claim 16, Golomb et al. discloses a method of treating a hydrocarbon-bearing formation ([0006]) comprising:
introducing into the hydrocarbon bearing formation a composition comprising a dispersion of capsules 10 in critical or supercritical carbon dioxide 18 ([0012]; [0029]), the capsules 10 comprising an aqueous solution 14 encapsulated by particles 22 (see Figure 1), wherein the particles have a particle size in a range of from about 10 to 200 nm and a thickness of less than 5 nm ([0067]), wherein the composition does not comprise a surfactant ([0015], wherein the particles are provided in an amount sufficient for emulsification; [0033], wherein the particles are used as emulsifying agents; [0038]-[0039], [0042]-[0043], wherein the emulsifying agent comprises the particulate material alone; [0074], wherein the emulsion can be stabilized by the particulate material and a surfactant, and, therefore, such a surfactant is not necessary; see further explanation below), and wherein the dispersion has a bulk density ([0081]; [0124]; furthermore, bulk density is a property and therefore the dispersion would indeed have a bulk density);
contacting hydrocarbons in the hydrocarbon-bearing formation with the dispersion ([0010]); and
recovering hydrocarbons ([0010]).
With regard to the exclusion of a surfactant, Golomb et al. discloses wherein the particulate material is provided in an amount sufficient for emulsification ([0016]). The reference further provides for description of the composition formed with the particulate material as the emulsifying agent alone. Although Golomb et al. suggests wherein the composition can additionally include a surfactant for emulsification, such is not deemed as required for inclusion therein as the composition can therefore, alternatively, be formed without such. As such, one having ordinary skill in the art would recognize the ability to form the dispersion without the surfactant and it would therefore have been obvious to one having ordinary skill in the art to provide for the composition of Golomb et al. without a surfactant since one of ordinary skill would recognize the inclusion thereof for forming the dispersion of capsules in critical/ supercritical carbon dioxide is not necessary and it has been held the omission of an element where the function attributed thereto is not desired or required is obvious. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
With regard to the dispersion as having a bulk density within the range as claimed, Golomb et al. discloses wherein a stable macroemulsion is formed and wherein the gross density of the supercritical globules was greater than that of the surrounding water ([0124]). The reference further suggests wherein the carbon dioxide has a density of 0.93 g/cm3 ([0081]). Furthermore, it is noted, since bulk density is a property, the dispersion would indeed have a bulk density. It would have been obvious to one having ordinary skill in the art to provide for the dispersion as having a bulk density as claimed since 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). Additionally, the Examiner notes, 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). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed bulk density range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the dispersion of Golomb et al. is suggested as contacting hydrocarbons for enhancing recovery thereof as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for a dispersion with a bulk density as claimed, and, as such, the determination of optimal bulk density thereof would be achievable through routine experimentation in the art.
Golomb et al. discloses wherein the aqueous droplets are stabilized by the particulate material 22 and wherein the droplet size of a particular emulsion depends on the size and type of particulate materials, interparticle interactions, concentrations and compositions of the phases ([0050]). It is further disclosed wherein the particulate materials may have a variety of shapes and sizes, including irregular shapes, wherein the size of the particulate material depends on various factors; the size of the particulate material is further disclosed to refer to the length of the shortest line/cross-sectional dimension connecting two end points of the material and passing through the geometric center of the material; it is further suggested wherein such a size includes less than 5 nm and particles may comprise the class of particles referred to as nano-particles ([0067]); for an aqueous in carbon dioxide emulsion to form, hydrophobic particles are to be used; the hydrophobic particles are wetted by the continuous carbon dioxide phase and a sheath of these hydrophobic particles then surrounds the water droplets so as to prevent the coalescence of either the carbon dioxide or water droplets into the bulk phase ([0029]; [0031]; [0033]). Golomb et al., however, fails to disclose wherein such hydrophobic particles have a thickness equal to or less than 1 nm as claimed.
Prud’Homme et al. teaches of graphene such as graphene sheets as an improvement over particles previously used for such purposes, such as clay nanoplatelets ([0040]). It is further noted wherein layered materials that form intercalation compounds include graphite and boron nitride, wherein graphene and boron nitride are the only solid layered materials that are composed of atomically thin sheets of atoms ([0042]); graphene is further taught to be in the form of two-dimensional, flexible sheets ([0095]).
Since Prud’Homme et al. teaches graphene flexible sheets which are atomically thin sheets of atoms as hydrophobic particles capable of acting as an emulsifier in an improved manner to nano-particles such as clay, it would have been obvious to one having ordinary skill in the art to try such atomically thin sheets of graphene as the hydrophobic particle used in the method of Golomb et al. in order to yield the predictable result of forming an aqueous in carbon dioxide emulsion therewith as the emulsifying capable hydrophobic graphene would be expected to act in the manner of the hydrophobic nanoparticles disclosed by Golomb et al., i.e., provide for the formation of an aqueous in carbon dioxide emulsion therewith. It is the position of the Office since Golomb et al. provides for the formation of an aqueous in supercritical carbon dioxide emulsion through the use of hydrophobic nano-particles forming a sheath, i.e., encapsulation, around the aqueous droplets therein and Prud’Homme et al. suggests graphene nano-sheets as hydrophobic particle emulsifiers that are an improvement upon those previously used for such purposes, the use of such would have been obvious to try for at least these reasons.
With regard to the size of such graphene sheets of Prud’Homme et al., the Examiner notes Prud’Homme et al.’s reference to such as two-dimensional, as well as wherein are composed of several atomic layers and in the form of thin sheets of atoms; such is the description provided for by Applicant in the specification as filed in defining the instantly claimed particles in [0021]. As such, it is the position of the Office, in providing the hydrophobic graphene flexible sheets of Prud’Homme et al. as the hydrophobic nanoparticle in the emulsion of Golomb et al., one of ordinary skill in the art would recognize the optimal thickness thereof as encompassing a thickness of several atomic layers, such as defined in the specification, and as 1 nm or less, as instantly claimed, since 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). Furthermore, graphene nanosheets are defined as having the property of being very thin, such as 0.34 nm (see citation in Conclusion of previous office action), and as such, the provision of the graphene nanosheets of Prud’Homme et al. in the fluid of Golomb et al. would encompass a width as claimed since it has been held “Products of identical chemical composition cannot have mutually exclusive properties.” Prud’Homme et al. further suggests a surface area of such particles as 300-2600 m2/g (abstract). As such, one of ordinary skill in the art would recognize an appropriate length of the particles having a width equal to or less than 1 nm to provide in order to provide the suggested surface area.
With respect to depending claim 18, Golomb et al. discloses where the 2-dimensional particles are hydrophobic ([0012]; [0029]; [0033], wherein when hydrophobic particles are used an aqueous-in-carbon dioxide emulsion ensues).
With respect to dependent claim 19, Golomb et al. discloses wherein the ratio of volume of continuous phase, i.e., carbon dioxide, to dispersed phase, i.e., aqueous solution, may be greater than or equal to 1:1 to 20:1, while it is to be understood that any suitable ratio of volumes of continuous phase to dispersed phase can be used to form the disclosed emulsions ([0078]). The Examiner notes, a 1:1 ratio would provide for 50% volume aqueous solution. Although silent to “about” 60-70 volume percent specifically, the Examiner notes Golomb’s explicit disclosure wherein any suitable ratio of volumes of continuous phase to dispersed phase can be used to form the disclosed emulsions. As such, it is the position of the Office the provision of the instantly claimed volume percent for the aqueous solution would be obvious to one having ordinary skill in the art since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, 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 volume of aqueous solution as critical and it is unclear if any unexpected results are achieved by such. Since Golomb et al. suggests wherein any suitable volume ratio that can form an emulsion can be used, it appears the choice to use the instantly claimed volume would be achievable through routine experimentation in the art.
With respect to dependent claim 20, Golomb et al. discloses wherein the dispersion comprises an amount of particulate material necessary to form an emulsion, which may depend on one or more parameters such as particle size, droplet size, type of emulsion, shape of particle and concentrations; it is further suggests wherein without limitation, the mass ratio of particulate material to carbon dioxide may be greater than or equal to 0.005:1 up to 1.0:1 ([0079]). As such, in determining an appropriate weight percent of particulate to include, it would have been obvious to one having ordinary skill in the art to include an amount of particulates as claimed since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, 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 particulate weight percent as critical and it is unclear if any unexpected results are achieved by such. Since Golomb et al. suggests wherein various amounts of particulate material can be used to form the disclosed emulsion, it appears the choice to use the instantly claimed volume would be achievable through routine experimentation in the art.
With respect to new dependent claim 21, Prud’Homme et al. discloses wherein the particles are selected from the group as claimed (see explanation in claim 16, above).
With respect to dependent claim 22, Prud’Homme et al. teaches where the graphene has a bulk density overlapping the range as claimed ([0067]-[0143]). As such, it is the position of the Office that one having ordinary skill in the art would recognize the optimal form and, thus, bulk density, thereof to employ as the hydrophobic particles in the method of Golomb et al. in order to impart the hydrophobic emulsifying properties thereof thereto since 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). Additionally, the Examiner notes, 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). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed bulk density of graphene range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the graphene of Prud’Homme et al. is suggested as imparting hydrophobic emulsifying properties, it does not appear that such would be considered an unexpected result of using a graphene particle with a bulk density as claimed, and, as such, the determination of optimal bulk density thereof to employ when given the suggested values thereof of Prud’Homme et al. would be achievable through routine experimentation in the art. Furthermore, it is the position of the Office that such would indeed have a bulk density as claimed since “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. If there is any difference between the bulk density of the atomically thin graphene nanosheets of Prud’Homme et al. and that of the instant claims, the difference would have been minor and obvious. See MPEP 2112.01(1), 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, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claims 16, 18-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Golomb et al. (US 2010/0243248 – cited previously) in view of Fu et al. (US 2006/0046937).
With respect to independent claim 16, Golomb et al. discloses a method of treating a hydrocarbon-bearing formation ([0006]) comprising:
introducing into the hydrocarbon bearing formation a composition comprising a dispersion of capsules 10 in critical or supercritical carbon dioxide 18 ([0012]; [0029]), the capsules 10 comprising an aqueous solution 14 encapsulated by particles 22 (see Figure 1), wherein the particles have a particle size in a range of from about 10 to 200 nm and a thickness of less than 5 nm ([0067]), wherein the composition does not comprise a surfactant ([0015], wherein the particles are provided in an amount sufficient for emulsification; [0033], wherein the particles are used as emulsifying agents; [0038]-[0039], [0042]-[0043], wherein the emulsifying agent comprises the particulate material alone; [0074], wherein the emulsion can be stabilized by the particulate material and a surfactant, and, therefore, such a surfactant is not necessary; see further explanation below), and wherein the dispersion has a bulk density ([0081]; [0124]);
contacting hydrocarbons in the hydrocarbon-bearing formation with the dispersion ([0010]); and
recovering hydrocarbons ([0010]).
With regard to the exclusion of a surfactant, Golomb et al. discloses wherein the particulate material is provided in an amount sufficient for emulsification ([0016]). The reference further provides for description of the composition formed with the particulate material as the emulsifying agent alone. Although Golomb et al. suggests wherein the composition can additionally include a surfactant for emulsification, such is not deemed as required for inclusion therein as the composition can therefore, alternatively, be formed without such. As such, one having ordinary skill in the art would recognize the ability to form the dispersion without the surfactant and it would therefore have been obvious to one having ordinary skill in the art to provide for the composition of Golomb et al. without a surfactant since one of ordinary skill would recognize the inclusion thereof for forming the dispersion of capsules in critical/ supercritical carbon dioxide is not necessary and it has been held the omission of an element where the function attributed thereto is not desired or required is obvious. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
With regard to the dispersion as having a bulk density within the range as claimed, Golomb et al. discloses wherein a stable macroemulsion is formed and wherein the gross density of the supercritical globules was greater than that of the surrounding water ([0124]). The reference further suggests wherein the carbon dioxide has a density of 0.93 g/cm3 ([0081]). It would have been obvious to one having ordinary skill in the art to provide for the dispersion as having a bulk density as claimed since 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). Additionally, the Examiner notes, 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). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed bulk density range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the dispersion of Golomb et al. is suggested as contacting hydrocarbons for enhancing recovery thereof as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for a dispersion with a bulk density as claimed, and, as such, the determination of optimal bulk density thereof would be achievable through routine experimentation in the art.
Golomb et al. discloses wherein the aqueous droplets are stabilized by the particulate material 22 and wherein the droplet size of a particular emulsion depends on the size and type of particulate materials, interparticle interactions, concentrations and compositions of the phases ([0050]). It is further disclosed wherein the particulate materials may have a variety of shapes and sizes, including irregular shapes, wherein the size of the particulate material depends on various factors; the size of the particulate material is further disclosed to refer to the length of the shortest line/cross-sectional dimension connecting two end points of the material and passing through the geometric center of the material; it is further suggested wherein such a size includes less than 5 nm and particles may comprise the class of particles referred to as nano-particles ([0067]); for an aqueous in carbon dioxide emulsion to form, hydrophobic particles are to be used; the hydrophobic particles are wetted by the continuous carbon dioxide phase and a sheath of these hydrophobic particles then surrounds the water droplets so as to prevent the coalescence of either the carbon dioxide or water droplets into the bulk phase ([0029]; [0031]; [0033]). Golomb et al., however, fails to disclose wherein such hydrophobic particles have a thickness equal to or less than 1 nm as claimed.
Fu et al. teaches nanotubes suitable for use in oilfield treatment fluids ([0025]) to include nanotubes based upon carbon or boron nitride, wherein such may be treated so as to render the surface thereof hydrophobic depending upon the intended use thereof ([0028]). Fu et al. further teaches exemplary sizes for the nanotubes disclosed therein as including thicknesses of 2 nm or within a range of 0.7-1.2 nm ([0030]).
Since Golomb discloses the use of hydrophobic nanoparticles in the method set forth above, wherein such include carbon based nanoparticles and Fu et al. teaches boron nitride as an alternative nanoparticle thereto, it would have been obvious to one having ordinary skill in the art to try a hydrophobic boron nitride having a thickness as suggested by Fu et al. in the method of Golomb et al. in order to yield the predictable result of forming an aqueous in carbon dioxide emulsion therewith as the hydrophobic boron nitride of Fu et al. would be expected to act in the manner of the hydrophobic nanoparticles disclosed by Golomb et al., i.e., provide for the formation of an aqueous in carbon dioxide emulsion therewith.
Golomb discloses a particle size falling within the claimed range of about 10 to 200 nm and, therefore, when using the boron nitride nanoparticles of Fu et al. within the method of Golomb et al., determination of “a particle size” within the range as claimed would be achievable through routine experimentation in the art since 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). With further regard to the thickness thereof, Fu et al. teaches exemplary sizes for the nanotubes disclosed therein as including diameters of 2 nm or within a range of 0.7-1.2 nm ([0030]). Since Golomb discloses wherein the average size of the particles can be less than 5 nm ([0067]) and Fu further provides for particle diameters of less than 1nm, one having ordinary skill in the art would recognize an optimal thickness that is less than 5 nm to employ for the hydrophobic boron nitride of Fu in the method of Golomb as claimed in order to form the aqueous in carbon dioxide emulsion therewith by encapsulation of the aqueous solution with the boron nitride particles. The instant specification fails to explicitly establish the instantly claimed thickness of the boron nitride particles as critical and it is unclear if any unexpected results are achieved by using such a thickness. Since the particles of Golomb, in view of Fu et al., encapsulate the aqueous solution so as to form a dispersion thereof in critical or supercritical carbon dioxide, it does not appear that such would be considered an unexpected result of providing for the instantly claimed particle thickness, and, as such, the determination of optimal particle thickness would be achievable through routine experimentation in the art.
With respect to depending claim 18, Golomb et al. discloses where the 2-dimensional particles are hydrophobic ([0012]; [0029]; [0033], wherein when hydrophobic particles are used an aqueous-in-carbon dioxide emulsion ensues).
With respect to dependent claim 19, Golomb et al. discloses wherein the ratio of volume of continuous phase, i.e., carbon dioxide, to dispersed phase, i.e., aqueous solution, may be greater than or equal to 1:1 to 20:1, while it is to be understood that any suitable ratio of volumes of continuous phase to dispersed phase can be used to form the disclosed emulsions ([0078]). The Examiner notes, a 1:1 ratio would provide for 50% volume aqueous solution. Although silent to “about” 60-70 volume percent specifically, the Examiner notes Golomb’s explicit disclosure wherein any suitable ratio of volumes of continuous phase to dispersed phase can be used to form the disclosed emulsions. As such, it is the position of the Office the provision of the instantly claimed volume percent for the aqueous solution would be obvious to one having ordinary skill in the art since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, 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 volume of aqueous solution as critical and it is unclear if any unexpected results are achieved by such. Since Golomb et al. suggests wherein any suitable volume ratio that can form an emulsion can be used, it appears the choice to use the instantly claimed volume would be achievable through routine experimentation in the art.
With respect to dependent claim 20, Golomb et al. discloses wherein the dispersion comprises an amount of particulate material necessary to form an emulsion, which may depend on one or more parameters such as particle size, droplet size, type of emulsion, shape of particle and concentrations; it is further suggests wherein without limitation, the mass ratio of particulate material to carbon dioxide may be greater than or equal to 0.005:1 up to 1.0:1 ([0079]). As such, in determining an appropriate weight percent of particulate to include, it would have been obvious to one having ordinary skill in the art to include an amount of particulates as claimed since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, 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 particulate weight percent as critical and it is unclear if any unexpected results are achieved by such. Since Golomb et al. suggests wherein various amounts of particulate material can be used to form the disclosed emulsion, it appears the choice to use the instantly claimed volume would be achievable through routine experimentation in the art.
With respect to new dependent claim 21, Fu et al. discloses wherein the particles are selected from the group as claimed (see explanation in claim 16, above).
With respect to dependent claim 23, Fu et al. teaches boron nitride, as noted above. Although silent to the bulk density thereof, it is the position of the Office that such would indeed have a bulk density as claimed since “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. If there is any difference between the bulk density of the boron nitride nanotubes of Fu et al. and that of the instant claims, the difference would have been minor and obvious. See MPEP 2112.01(1), 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, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
Response to Arguments
Applicant’s arguments and amendments made with respect to the 35 USC 112(b) rejections as set forth in the previous office action have been fully considered and are persuasive. The rejections have been withdrawn in view of Applicant’s amendments.
Applicant’s arguments with respect to the rejections over the prior art have been fully considered, but they are not persuasive.
Applicant asserts Golomb teaches partial emulsification is formed with the carbon dioxide and particulate component while an unexpected effect of the current invention without a surfactant is that the nature of the nanoparticles allows for the carbon dioxide molecules to pack tightly near the surface of the nanoparticles which results in an increase bulk density. Applicant notes the bulk density is described in [0039]. Applicant asserts the partial emulsification taught by Golomb would not have this unexpected effect.
The Examiner notes, Applicant has not attributed the bulk density of the instant dispersion to the exclusion of the surfactant, and, as such, the bulk density is not considered an unexpected effect of such. Furthermore, the parent applications to the instant application did not exclude a surfactant and the dispersions disclosed therein also had a bulk density within the range as claimed. As such, it is unclear if the bulk density of the instantly claimed dispersion is indeed attributed to the exclusion of the surfactant when such a bulk density was also achieved without the exclusion of such.
Golomb et al. teaches a density of the liquid carbon dioxide, as well as the gross density of the supercritical globules created thereby; furthermore, a dispersion would inherently have a bulk density as a property thereof, and, as such, it is the position of the Office that one having ordinary skill in the art could indeed arrive at the invention as claimed.
The Examiner notes, should the bulk density of the dispersion be attributed to the combination of elements therein, i.e., specific type of particle (graphene/boron nitride having a specific bulk density) and a specific weight percent thereof within the dispersion, amendments to include such within the independent claim are advised. Arguments pertaining to unexpected results of attaining a bulk density of the dispersion with such may be more persuasive. “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).” In the instant case, the specific types of particles and/or properties and amounts thereof would be required for the claims to be commensurate in scope.
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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
08/18/25