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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it is not a concise explanation of the invention, but it repeats the claim limitation. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claim 1 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 1 recites the term “at least….wt.%” This is a range with unbounded upper limit, and as such it is unclear the amount of each chemical Applicant is intended to seek patent protection of; as such, the claim is rendered indefinite.
All the claims dependent of claim 1 are also rejected.
Claim 2 recites the term “at least….wt.%” This is a range with unbounded upper limit, and as such it is unclear the amount of each chemical Applicant is intended to seek patent protection of; as such, the claim is rendered indefinite.
Claim 9 recites the term “greater than….ppm.” This is a range with unbounded upper limit, and as such it is unclear the amount of each chemical Applicant is intended to seek patent protection of; as such, the claim is rendered indefinite.
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.
Claims 1, and 5-9 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Padilla-Acevedo (US 2018/0072599 A1) (“Padilla” herein), as evidenced by Brown et al. (US 2004/0054063 A1).
Claim 1.
Padilla discloses, as best understood based on the indefiniteness above, a scale inhibitor composition comprising: [0008-0009, 0015-0017]
a reaction product of a polymerization mixture including: [0015-0017]
acrylic acid, [0018, 0022]
2-acrylamido-2-methylpropane sulfonic acid, [0017,0023-0024, 0044] and
a phosphoethyl methacrylate composition that includes at least 10 wt.% of phosphoethyl methacrylate monoester, at least 10 wt.% of phosphoethyl methacrylate diester, and at least 5 wt.% of phosphoric acid, based on a total weight of the phosphoethyl methacrylate composition. [0020, 0022]
Brown (US 2004/0054,063 A1) used as evidence recites ¶ [0136] that the PEM used in the preparation of the examples and comparative examples was unpurified and contained 52.2 weight % phosphoethyl methacrylate monomer, 33.2 weight % phosphodi(ethyl methacrylate), and 14.5 weight % phosphoric acid. The phosphodi(ethyl methacrylate) is a multiethylenically unsaturated monomer.
Or a different interpretation of Padilla as evidenced by Brown
Claim 1.
Padilla discloses, as best understood based on the indefiniteness above, a scale inhibitor composition comprising: [0008-0009, 0015-0017]
a reaction product of a polymerization mixture including: [0015-0017]
acrylic acid, [0018, 0022]
2-acrylamido-2-methylpropane sulfonic acid, [0017,0023-0024, 0044] and
a phosphoethyl methacrylate [0020, 0022]
Brown (US 2004/0054,063 A1) used as evidence recites ¶ [0136] that the PEM used in the preparation of the examples and comparative examples was unpurified and contained 52.2 weight % phosphoethyl methacrylate monomer, 33.2 weight % phosphodi(ethyl methacrylate), and 14.5 weight % phosphoric acid.
Padilla disclosed the claimed invention except for the least 10 wt.% of phosphoethyl methacrylate monoester, at least 10 wt.% of phosphoethyl methacrylate diester, and at least 5 wt.% of phosphoric acid, based on a total weight of the phosphoethyl methacrylate composition. It would have been obvious to a one having ordinary skill in the art before the effective filling date of the claimed invention was made to have the least 10 wt.% of phosphoethyl methacrylate monoester, at least 10 wt.% of phosphoethyl methacrylate diester, and at least 5 wt.% of phosphoric acid, based on a total weight of the phosphoethyl methacrylate composition, since it has beeh held that [W]here the general condition of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 5.
Padilla discloses the scale inhibitor composition as claimed in claim 1, wherein
the polymerization mixture includes [0015-0017]
from 30 wt.% to 60 wt.% of the acrylic acid, [0018, 0022]
from 30 wt.% to 60 wt.% of the 2-acrylamido-2-methylpropane sulfonic acid, [0017,0023-0024, 0044] and
from 6 wt.% to 19 wt.% of the phosphoethyl methacrylate composition, based on a total weight of the polymerization mixture. [0020, 0022]
Claim 6.
Padilla discloses the scale inhibitor composition as claimed in claim 1, wherein
the polymerization mixture includes [0015-0017]
from 45 wt.% to 50 wt.% of the acrylic acid, [0018, 0022]
from 40 wt.% to 45 wt.% of the 2-acrylamido-2-methylpropane sulfonic acid, [0017,0023-0024, 0044] and
from 8 wt.% to 12 wt.% of the phosphoethyl methacrylate composition, based on a total weight of the polymerization mixture. [0020, 0022]
Claim 7.
Padilla discloses a scale inhibitor for oil and gas production, the
scale inhibitor including the scale inhibitor composition as claimed in claim 1. [0034-0038 & Claim 1 above]
Claim 8.
Padilla discloses a scale inhibition treatment method for oil and
gas production, the method comprising introducing the scale inhibitor composition as
claimed in claim 1, to brine or water. [0034-0038, 0046, & Claim 1 above]
Claim 9
Padilla discloses the method as claimed in claim 8, wherein the scale inhibitor composition is introduced to brine having a total dissolved solids content of greater than 80,000 ppm. [0034-0038, 0046, & Claim 1 above]
Allowable Subject Matter
Claims 2-4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and there is no other rejection pending against the claim limitation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Padilla-Acevedo (US 2017/0066958 A1) THERMALLY STABLE POLYMERIC SCALE INHIBITOR COMPOSITIONS teaches The present invention relates to a thermally stable polymeric scale inhibitor compositions having a pH of from 5 to 10, and use thereof. Preferably, the polymeric scale inhibitor is a polycarboxylic acid (co)polymer not containing a sulfuric acid group and/or sulfonate group. The polymeric scale inhibitor compositions of the present invention are particularly suitable for high pressure/high temperature scale inhibition treatment of oil and gas production wells and/or subterranean formations, Brown (US 2004/0054063 A1) Polymer Particles Having Select Pendant Groups And Composition Prepared Therefrom teaches Polymer particles having select functional or absorbing groups are provided. The polymer particles are useful for preparing organic-inorganic composite particles that are suitable for providing dried coatings with improved hiding, and Fiarman (US 5,294,686) Process For Efficient Utilization Of Chain Transfer Agent teaches A process for efficiently utilizing hypophosphorous acid or salts thereof as a chain transfer agent is provided wherein the polymerization is conducted to a final polymer solids level of at least about 50 percent by weight.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 571-272-4137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 05/29/2026
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