CTNF 18/685,561 CTNF 90625 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. DETAILED ACTION Specification 06-31 AIA The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. 07-29 AIA The disclosure is objected to because of the following informalities: On p.22, at lined 18-19, “Error! Reference source not found.” should be replaced with the appropriate reference . Appropriate correction is required. Claim Objections 07-29-01 AIA Claim s 1-7 are objected to because of the following informalities: Independent claim 1, lines 2-3 should further recite “the polymer comprising a residual amount of zirconium , wherein “a residual amount” is defined as from 0 ppm to less than 300 ppm ” (for ease of reading; incorporating the definition in p.8, lines 5-6 for “residual amount”) . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-01 AIA 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. 07-30-02 AIA 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. 07-31-01 Claims 1-7 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. 07-34-01 Claims 1-7 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. Independent claim 1 recites “the polymer having an absolute weight average molecular weight (M W(Abs) ) greater than 1,300,000 g/mol .” Notably, this is an unbounded range and encompasses weight-average molecular weights of, e.g., 3,000,000, 10,000,000, 20,000,000, 500,000,000, 1,000,000,000,000, etc. g/mol. However, Applicant has only disclosed “The polymer ( i.e., the C 6 -C 14 α-olefin homopolymer, the C 6 -C 14 α-olefin copolymer, or the C 6 -C 14 α-olefin terpolymer) has one, some, or all of the following properties: (i) a M W(Abs) from greater than 1,300,000 g/mol to 12,000,000 g/mol , or from 1,400,000 g/mol to 10,000,000 g/mol, or from 1,400,000 g/mol to 9,000,000 g/mol, or from 1,500,000 g/mol to 8,000,000 g/mol;” (p.13, line 24-p.14, line 3). There is no description of M W(Abs) that greater than 12,000,000 g/mol. First , the unbounded range plainly encompasses embodiments that were not described, such as 20,000,000, 500,000,000, 1,000,000,000,000, etc. g/mol. Accordingly, the claim lacks an adequate Written Description for its full scope. Second , it is unclear if Applicant intended for “greater than 1,300,000 g/mol” to implicitly or inherently include some upper boundary, such as 12,000,000, 20,000,000, 500,000,000, 1,000,000,000,000, etc. g/mol, and if so, then what the upper boundary would be or not be. Accordingly, the claim scope is also rendered Indefinite. Claims 2-6 are rejected by dependency, also failing to limit the claims to the Described scope in a Definite manner. Independent claim 7 includes the same language as independent claim 1 and thus also fails to limit the claims to the Described scope in a Definite manner. For examination purposes, claims will be read as though independent claim 1 requires the disclosed 12,000,000 g/mol upper boundary, e.g.: “ 1. (currently amended) A drag reducing agent comprising: a polymer composed of one or more C 6 -C 14 α-olefin monomers, the polymer comprising a residual amount of zirconium , wherein “a residual amount” is defined as from 0 ppm to less than 300 ppm , the polymer having an absolute weight average molecular weight (M W(Abs) ) from greater than 1,300,000 g/mol to 12,000,000 g/mol and a M W(Abs) / Mn (Abs) from 1.3 to 3.0; and a liquid carrier that includes at least water. ” 07-31-01 Claim 3 is 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. 07-34-01 Claim 3 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 3 recites “wherein the drag reducing agent is treated to reduce hydrocarbon liquid carrier content and increase water content.” Upon consultation with the Specification, the Office observes that Applicant has only disclosed “In an exemplary embodiment, the polymer is originally prepared in a liquid carrier that is a hydrocarbon, referred to as the original hydrocarbon liquid carrier. The polymer with original hydrocarbon liquid carrier is further processed to remove at least part of the original hydrocarbon liquid carrier and add water to form an aqueous based mixture. In particular, a sufficient amount of a surfactant concentration may be added to water and then the water-surfactant mixture is added to the original polymer-hydrocarbon carrier mixture to make a bi-phasic composition . Then, the bi-phasic composition may be homogenized using a high-shear mixer in a batch or in a semi-batch reactor process, e.g., where the mixture is circulated through a homogenizer and then back to the reactor. In such a process, the hydrocarbon liquid-water azeotrope may be substantially stripped and/or removed and additional water may be added to maintain the polymer solid concentration at a desired level ” (p.16, lines 18-28; also the same using specifically polyoctene in hexane at p.24, lines 9-17). There are no other means or mechanisms described for how to treat the drag reducing agent to reduce hydrocarbon liquid carrier content and increase water content. First , while there is a presumption that an adequate Written Description of the claimed invention is present in the Specification as filed, a question as to whether a Specification provides an adequate Written Description may arise in the context of an original claim. An original claim may lack Written Description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad Genus claim is presented but the disclosure only describes a narrow Species with no evidence that the Genus is contemplated . See MPEP 2163.03 Typical Circumstances Where Adequate Written Description Issue Arises. For example, as in MPEP 2163, the Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 "merely by clearly describing one embodiment of the thing claimed." LizardTech v. Earth Resource Mapping, Inc. , 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed. In LizardTech , claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. Id. In this case, (2) a broad Genus claim is presented (broadly encompassing using any/every possible means to treat the drag reducing agent to reduce hydrocarbon liquid carrier content and increase water content) but the disclosure only describes a narrow Species (specifically, adding a surfactant to water to form a water-surfactant mixture, then adding the water-surfactant mixture to the drag reducing agent to make a bi-phasic composition, then homogenizing the bi-phasic composition using a mixer, then substantially stripping and/or removing a hydrocarbon liquid-water azeotrope, and then adding additional water to the drag reducing agent, to treat the drag reducing agent to reduce hydrocarbon liquid carrier content and increase water content) with no evidence that the Genus is contemplated. For example, it appears that the method could somehow instead use means such as filtration processes, distillation processes, de-oiling additives, etc., but Applicant has not actually described these other possibilities or otherwise indicated that such other means were contemplated or possessed at the time of filing. Accordingly, the claim lacks an adequate Written Description for its full scope, like in Lizardtech . Second , based on the lacking disclosure, it is unclear what other means would be operable to provide “wherein the drag reducing agent is treated to reduce hydrocarbon liquid carrier content and increase water content” or not. For example, it is unclear if there are filtration processes which would be suitable to treat the drag reducing agent “to reduce hydrocarbon liquid carrier content and increase water content” or not. As well, it is unclear if there are distillation processes which would be suitable to treat the drag reducing agent “to reduce hydrocarbon liquid carrier content and increase water content” or not. Similarly, it is unclear if there are de-oiling additives which would be suitable to treat the drag reducing agent “to reduce hydrocarbon liquid carrier content and increase water content” or not. Accordingly, the claim scope is also rendered Indefinite. In response, Applicant should Amend claim 3 to recite the specific means described to treat the drag reducing agent to reduce hydrocarbon liquid carrier content and increase water content, e.g.: “3 . (currently amended) The drag reducing agent of claim 1, of wherein the drag reducing agent is treated to reduce hydrocarbon liquid carrier content and increase water content by: adding a surfactant to water to form a water-surfactant mixture; then adding the water-surfactant mixture to the drag reducing agent to make a bi-phasic composition; then homogenizing the bi-phasic composition using a mixer; then substantially stripping and/or removing a hydrocarbon liquid-water azeotrope from the bi-phasic composition; and then adding additional water to the drag reducing agent . ” Alternative language than the suggestion above may also be appropriate to incorporate the specific means described. Allowable Subject Matter Claims 1-7 would be allowable if rewritten or amended to overcome the Claim Objections and the rejection(s) under 35 U.S.C. 112 set forth in this Office action. Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : The reference to Koenigs ‘302 (WO 2021/202302) (cited by Applicant and in Int’l Search Report) discloses a drag reducing agent including a polymer and a liquid carrier wherein the polymer is composed of C 6 -C 14 α-olefin monomers, comprises a residual amount of zirconium, and has an absolute weight average molecular weight greater than 1,300,000 g/mol and a MW/Mn from 1.3 to 3.0 (abstract). However, this reference only specifies use within a hydrocarbon liquid carrier ([0060]-[0064] esp. [0062]) and otherwise only uses pure water for validation of drag reduction measurements (along with pure Isopar L) of the drag reducing agent comprising the polymer in the hydrocarbon liquid carrier ([0082]), i.e., not water with the drag reducing agent . The reference to Koenigs ‘065 (12,480,065) claims a similar drag reducing agent comprising “comprising: from 10 wt % to 80 wt % of a polymer consisting of (i) one or more C 6 -C 14 α-olefin monomers, and (ii) a residual amount of a component selected from the group consisting of zirconium, germanium, boron, and combinations thereof, the polymer having an absolute weight average molecular weight (Mw (Abs) greater than 1,300,000 g/mol and a Mw (Abs) /Mn (Abs) from 1.3 to 3.0; from 20 wt % to 90 wt % of a liquid carrier; and the drag reducing agent has a viscosity at 100° C from 2.9014*10 +05 m-Pas to 3.573*10 +07 m-Pas” (claim 1). However, this reference fails to disclose or teach the liquid carrier comprising water . The reference to Martin (2007/0205392) discloses “a freeze-protected, stabilized polymer drag reducing agent suspension comprises a combination of a drag reducing agent polymer and an aqueous carrier ” (abstract) i.e. >50 wt% water ([0037]) wherein “The polymer DRA's are, in some embodiments, ultra-high molecular weight poly alpha olefins that have been formed by polymerization of a selected alpha olefin monomer or combinations of alpha olefin monomers. By "ultra-high molecular weight" is meant polymers having a number average molecular weight greater than about 1 million, and in some embodiments from about 20 million to about 35 million, or higher” ([0026]). However, this reference fails to disclose the weight average molecular weight M w(Abs) or the dispersity index (PDI), M w(Abs) /M- n(Abs) , and it would not be obvious to modify the reference to provide, specifically, M w(Abs) >1,300,000 or M w(Abs) /M- n(Abs) from 1.3-3.0. The reference to Bicerano (2017/0335075) states “For polymers within the typical polydispersity (M w /M n ) range of 2.0 to 2.5 (where M n is the number-average molecular weight ) that is obtained during many polymerization processes, an optimum M w in the range of 10M e to 15M e often results in the best balance of two very important characteristics” wherein “ M w denotes the weight-average molecular weight ” ([0060]). However, this reference refers to this solely for the benefit of mechanical properties and melt viscosity, and there is nothing indicating the same range would be considered relevant for drag reducing purposes. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW SUE-AKO whose telephone number is (571)272-9455. The examiner can normally be reached M-F 9AM-5PM EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-24137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ANDREW SUE-AKO/Primary Examiner, Art Unit 3674 Application/Control Number: 18/685,561 Page 2 Art Unit: 3674 Application/Control Number: 18/685,561 Page 3 Art Unit: 3674 Application/Control Number: 18/685,561 Page 4 Art Unit: 3674 Application/Control Number: 18/685,561 Page 5 Art Unit: 3674 Application/Control Number: 18/685,561 Page 6 Art Unit: 3674 Application/Control Number: 18/685,561 Page 7 Art Unit: 3674 Application/Control Number: 18/685,561 Page 8 Art Unit: 3674 Application/Control Number: 18/685,561 Page 9 Art Unit: 3674
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