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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-16, in the reply filed on 05/11/26 is acknowledged. Upon further consideration of Applicant’s traversal, the lack of unity requirement as set forth in the office action mailed 04/08/26 is withdrawn.
Claims 1-17 are examined for patentability herein.
Specification
The use of the terms HF-1000 and LPA on page 4, which are trade names or marks used in commerce, have been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 1, along with claims 2-17, dependent therefrom, is objected to because of the following informalities: In claim 1, a conjunction is missing between elements ii) and iii). Applicant is advised to add the conjunction “and” to clearly require each of the components of the injection fluid. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-17 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Independent claim 1 recites wherein m is greater than or equal to 10 and wherein n is greater than or equal to 1. The values for m and n present ranges with an unbounded upper limit, and, therefore, encompasses a value so inconceivably high for each that it cannot reasonably be possible in the present invention. To make a point through hyperbole, the present application does not provide full enablement for values of m or n of 200, 300 or 1000 (increasable ad nauseam), even though these values are encompassed in the claimed range.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all values encompassed by the phrase of “greater than 10” and “greater than 1” within the scope of independent claim 1 can be used as claimed and whether claim 1 meets the test stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Upon applying this test to claim 1, undue experimentation would be required because:
(a) The breadth of the claims under the broadest reasonable interpretation encompasses values for m and n of 100, 1000, 10,000 or larger as such are encompassed in the claimed range and thus “greater than 10/1.”
(b) The nature of the invention as disclosed by the specification does not provide enough information for one of ordinary skill in the art to use a an alkoxylated alcohol having values of m or n of 100, 1000, 10,0000 or larger, even though these values are encompassed in the claimed range and thus “greater than 10/1.”
(c) The state of the prior art, at the time of filing does not encompasses an alkoxylated alcohol having a value of m or n which is infinite, even though such a value is encompassed in the claimed range.
(d) The level of one of ordinary skill in the art would not recognize a value of m or n of 100, 1000, 10,000 or larger, even though these values are encompassed in the claimed range.
(e) The predictability in the art is lacking since the specification is silent to a disclosure of a values of m or n of 100, 1000, 10,000 or larger, even though these values are encompassed in the claimed range.
(f) The quantity of experimentation necessary is great since the claims read on an unbounded range of “greater than 10/1,” for m and n, respectively, encompassing values thereof of 100, 1000, 10,000 or larger.
(g) There is no direction or guidance presented for a value of m or n of 100, 1000, 10,000 or larger, even though these values are encompassed in the claimed range.
(h) There is an absence of working examples concerning values of m or n of 100, 1000, 10000 or larger, even though these values are encompassed in the claimed range.
In light of the above factors, it is seen that undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claim 1, along with claims 2-17, dependent therefrom and, therefore, claims 1-17 are not enabled by the disclosure.
The Examiner notes, direction for values greater than 10 and 1 for PO and EO, respectively, are provided in Table 1; Applicant is advised to consider including an upper limit for each of m and n within the claims that takes such values into consideration.
Claim 2 is further rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 2 recites “wherein both m and n are greater than or equal to 10.” Such also presents a range for each of m and n with an unbounded upper limit, and, therefore, encompasses a value so inconceivably high for each that it cannot reasonably be possible in the present invention. To make a point through hyperbole, the present application does not provide full enablement for values of m or n of 200, 300 or 1000 (increasable ad nauseam), even though these values are encompassed in the claimed range. See the reasons set forth above with respect to the Wands factors in the rejection of claim 1.
Claim 3 is further rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 3 recites “wherein m/n is greater than or equal to 1.” Such also presents a range for the ratio of m to n with an unbounded upper limit, and, therefore, encompasses a value so inconceivably high for each that it cannot reasonably be possible in the present invention. To make a point through hyperbole, the present application does not provide full enablement for a ratio of m or n of 100, 200 or 300 (increasable ad nauseam), even though these values are encompassed in the claimed range. See the reasons set forth above with respect to the Wands factors in the rejection of claim 1.
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 1-17 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 “m greater than or equal to 10” and “n greater than or equal to 1.” These each represent a range with an unbounded upper limit, and, as such, it is unclear as to the extent of values for m and n Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite. Claims 2-17 are rejected by virtue of their dependency upon a rejected base claim.
Claim 2 is further 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 2 recites “m and n greater than or equal to 10,” thereby representing a range with an unbounded upper limit, and, as such, it is unclear as to the extent of values for m and n Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claim 3 is further 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 “m/n is greater than or equal to 1,” thereby representing a range with an unbounded upper limit, and, as such, it is unclear as to the extent of the ratio of m/n Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claims 7-9 are each 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. Each of dependent claims 7-9 presents a limitation pertaining to the organic acid or inorganic acid. However, Applicant has not positively defined and/or required the presence thereof within independent claim 1, upon which each of claims 7-9 depends, or claims 7-9. Claim 1 presents wherein the injection fluid comprises “an inorganic acid or acids and/or organic acid or acids.” As such, should Applicant indeed require the presence of the organic or inorganic acid in the injection fluid, identification of such in each of claims 7-9 is required. For example, with respect to claim 7, Applicant is advised to recite -The injection fluid of claim 1, wherein the injection fluid comprises the organic acid or acids and wherein the organic acid or acids comprises formic acid, acetic acid, malonic acid, oxalic acid, glycolic acid, or citric acid.- Claims 8 and 9 should be amended similarly; i.e., with a statement such as -wherein the injection fluid comprises the inorganic acid or acids and-.
Claim 15 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 15 recites the limitation "the co-solvent or mixture of co-solvents" in line 2, and is written as dependent upon independent claim 1. There is insufficient antecedent basis for this limitation in the claim as no co-solvent is required therein. It appears claim 15 is intended to depend from claim 14, wherein a co-solvent is recited.
Claim 17 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 17 recites the limitation "the minerals" in ii). There is insufficient antecedent basis for this limitation in the claim since “minerals” are not previously required.
Claim Rejections - 35 USC § 102/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 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6, 10, 14, 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Walker et al. (US 2020/0317993).
With respect to independent claim 1, Walker et al. discloses a water-in-oil emulsifier injection fluid (The Examiner note, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim) comprising:
i) at least one alkoxylated alcohol or mixture of alkoxylated alcohols having the structure as claimed ([0089], wherein surfactants having an overlapping number of carbons, PO groups and EO groups are disclosed) and wherein the alkoxylated alcohol or mixture of alkoxylated alcohols have a HLB value of 3.0 to 7.5 ([0086], wherein an overlapping rang of 7 to 10 is disclosed);
ii) an inorganic acid or acids and/or an organic acid or acids, or mixture thereof ([0092] and [0097], wherein additives further include an acid; the Examiner notes, all acids are either organic or inorganic, and, thus, Walker et al. provides for an acid as claimed; [0178]-[0183]),
iii) at least one hydrocarbon solvent or mixtures thereof ([0093]).
Walker et al. discloses various alkoxylated alcohol non-ionic surfactants, including those comprising an alkyl group as a linear or branched C1-C36 with 0-65 PO groups and 0-100 EO groups ([0089]); further suggestions include C6-C30:PO(30-40):EO(25-35) ([0089]), thereby providing an exemplary alkloxylated alcohol with values overlapping each of R, m and n, as claimed. The reference further suggests wherein the injection fluid may be an emulsion depending on the amount of oil within the injection fluid ([0110]), as well as wherein the HLB value of the surfactant is 7 to 10 ([0086]).
Although silent to explicitly stating a specific combination of R as having from 12 to 36 carbon atoms, with m greater than or equal to 10 and n greater than or equal to 1, and, further, wherein the HLB is from 3.0 to 7.5, since the suggested examples of non-ionic surfactant clearly provide an example of R, m and n as claimed, the HLB of the surfactant of Walker et al. would be expected to fall within the range as claimed since 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. If there is any difference between the HLB value of the alkoxylated alcohol of Walker 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). Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
With further regard to the obviousness rejection above, the Examiner notes, In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). 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 all of the instantly claimed combinations of values for R, m, n and HLB value encompassed by the ranges claimed as critical and it is unclear if any unexpected results are achieved by providing for such. Since Walker et al. discloses wherein the injection fluid reduces formation damage and increases the amount of hydrocarbons recovered (abstract) and such is indeed the same intended result of Applicant, as further exemplified by limitation iii) of instant claim 17, wherein it is recited improved flow paths are provided in the subterranean formation for the production of hydrocarbons, it does not appear that such would be an unexpected result of providing for the combination of R, m, n and HLB value as claimed, and, as such, the determination of optimal values for each of R, m, n and HLB value associated therewith would be achievable through routine experimentation in the art.
With respect to dependent claim 2, Walker et al. discloses wherein both m and n are greater than or equal to 10 ([0089], wherein further suggestions include C6-C30:PO(30-40):EO(25-35)).
With respect to dependent claim 3, Walker et al. discloses wherein m/n greater than or equal to 1 ([0089], wherein further suggestions include C6-C30:PO(30-40):EO(25-35)).
With respect to dependent claim 4, Walker et al. discloses wherein R has 16 to 36 carbons atoms ([0089], wherein 16 to 36 carbon atoms are within the disclosed range for R).
With respect to dependent claim 6, Walker et al. discloses wherein R is a linear alkyl group ([0089], wherein linear alkyl groups are suggested).
With respect to dependent claim 10, Walker et al. discloses wherein the hydrocarbon solvent comprises mixtures as claimed ([0093], wherein various oxygenates such as EGBE and DGBE, as well as “any combination thereof” is disclosed).
With respect to dependent claim 14, Walker et al. discloses wherein a co-solvent or mixture of co-solvents is added to the alkoxylated alcohol or mixture of alkoxylated alcohols ([0092]-[0093]).
With respect to dependent claim 16, Walker et al. discloses wherein the co-solvent or mixture of co-solvents comprises one as claimed ([0093]).
With respect to claim 17, Walker et al. et al. discloses a method for acid stimulation ([0136]-[0138])) of a subterranean formation, the method comprising:
i) injecting the injection fluid of claim 1 into the subterranean formation ([0150]);
ii) allowing for sufficient time for the injection fluid to react with the minerals ([0016]; [0048]; [0128]) in the subterranean formation ([0006]; [0009]; [0117]; [0129]; [0133]-[0134]; [0178]-[0179]); and
iii) providing improved flow paths in the subterranean formation for production of hydrocarbons ([0006]; [0009]; [0117]; [0129]; [0133]-[0134]).
Claim Rejections - 35 USC § 103
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Walker et al. as applied to claim 1 above, and further in view of O’Lenick, Jr (Guerbet Chemistry).
With respect to dependent claim 5, Walker et al. discloses wherein the surfactant is a C6-C36 Guerbet PO (0-65) and EO (0-100) or linear/branched C1-C36 alkyl PO (0-65) and EO (0-100) ([0089]). The reference further suggests wherein such may have a branched hydrophobic tail ([0088]). Walker et al. is silent, however, to explicitly providing for wherein R is a branched alkyl group which is branched at carbon 2 of the alkyl group as claimed. O’Lenick Jr teaches guerbet alcohols as products which contain beta-branched primary alcohols (p. 311), i.e., suggesting such are branched at carbon 2. As such, when providing for the hydrophobic tail of the Guerbet alcohols of Walker et al., it would have been obvious to one having ordinary skill in the art to provide for such as branched at carbon 2 of the alkyl group as such positioning is a known positioning of a hydrophobic tail of a Guerbet alcohol.
Claims 7-9, 11-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Walker et al..
With respect to dependent claim 7, Walker et al. discloses wherein the surfactant package may comprise an acid or iron control agent ([0092]), as can the injection fluid ([0097]). The reference, however, is silent to a specific acid/iron control agent that is included. However, Walker et al. teaches through example wherein the injection fluid may be used and is compatible with organic acids used as iron control agents, such as acetic acid and citric acid ([0182]-[0183]). Since Walker et al. teaches the inclusion of an acid in the injection fluid, wherein an acid is known to be either organic or inorganic, and Walker et al. clearly suggests the compatibility of organic acid iron control agents with the injection fluid and enhancement of the stimulation operation therewith, it would have been obvious to one having ordinary skill in the art to try an organic acid as claimed in the injection fluid of Walker et al. in order to enhance the stimulation operation therewith while also providing iron control.
With respect to dependent claim 8, Walker et al. discloses wherein the surfactant package may comprise an acid ([0092]) as can the injection fluid ([0097]). The reference, however, is silent to a specific acid that is included. However, Walker et al. teaches through example wherein the injection fluid may be used and is compatible with inorganic acids such as HCl ([0178]). Since Walker et al. teaches the inclusion of an acid in the injection fluid, wherein an acid is known to be either organic or inorganic, and Walker et al. clearly suggests the compatibility of HCl, an inorganic acid, with the injection fluid and enhancement of the stimulation operation therewith, it would have been obvious to one having ordinary skill in the art to try an inorganic acid such as HCl in the injection fluid of Walker et al. in order to enhance the stimulation operation.
With respect to dependent claim 9, Walker et al. discloses wherein the surfactant package, which may comprise an acid ([0092]), can be diluted with water or an aqueous based injection fluid prior to being added to the injection fluid ([0094]). Such an injection fluid may comprise from 30-99.85% water by weight of the total components ([0096]). It is disclosed wherein acid may be present in the aqueous based injection fluid in an amount of 10-20% by weight upon dilution ([0097]), thereby providing for an amount of acid within the range as claimed. The reference, however, is silent to a specific acid that is included. However, Walker et al. teaches through example wherein the injection fluid may be used and is compatible with inorganic acids such as HCl ([0178]), which is diluted ([0188]). Since Walker et al. teaches the inclusion of an acid in the injection fluid, wherein acids are either organic or inorganic, and Walker et al. clearly suggests the compatibility of HCl, an inorganic acid, with the injection fluid and enhancement of the stimulation operation therewith, it would have been obvious to one having ordinary skill in the art to try a diluted inorganic acid in the injection fluid of Walker et al. in order to enhance the stimulation operation.
With respect to dependent claim 11, Walker et al. suggests wherein the acid can be present in an amount of at least 10%, such as from 10-20% by weight ([0098]). Although silent to a volume percent of acid within the range as claimed, given the disclosure of Walker et al., one having ordinary skill in the art would recognize an optimal amount thereof to include in the injection fluid 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." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). 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 percent of acid as critical and it is unclear if any unexpected results are achieved by providing for such within the recited percent range. Since Walker et al. is suggested as providing for improved flow paths by injection of the injection fluid as is instantly claimed and disclosed by Applicant, see for example, instant claim 17, iii), it does not appear that such would be considered an unexpected result of providing for the acid within the volume percent range as claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 12, Walker et al. suggests components identified by Applicant as the hydrocarbon solvent and present at a concentration of less than 2% based on the total weight of the fluid ([0109]). Although silent to a volume percent thereof within the range as claimed, given the disclosure of Walker et al., one having ordinary skill in the art would recognize an optimal amount thereof to include in the injection fluid 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." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). 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 percent for the solvent as critical and it is unclear if any unexpected results are achieved by providing for such within the recited percent range. Since Walker et al. is suggested as providing for improved flow paths by injection of the injection fluid as is instantly claimed and disclosed by Applicant, see for example, instant claim 17, iii), it does not appear that such would be considered an unexpected result of providing for the solvent within the volume percent range as claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 13, Walker et al. suggests wherein the alkoxylated alcohol or mixture of alkoxylated alcohols is added to the injection fluid in an amount of at least 0.01% by weight to 5% by weight or less ([0105]). Although silent to a volume percent thereof within the range as claimed, given the disclosure of Walker et al., one having ordinary skill in the art would recognize an optimal amount thereof to include in the injection fluid 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." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). 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 percent for the alkoxylated alcohol or mixture of alkoxylated alcohols as critical and it is unclear if any unexpected results are achieved by providing for such within the recited percent range. Since Walker et al. is suggested as providing for improved flow paths by injection of the injection fluid as is instantly claimed and disclosed by Applicant, see for example, instant claim 17, iii), it does not appear that such would be considered an unexpected result of providing for the alkoxylated alcohol(s) within the volume percent range as claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 15, Walker et al. discloses the method as set forth above with respect to claim 14, and, further suggests wherein the co-solvent is present at a concentration of less than 2% based on the total weight of the fluid ([0109]). Although silent to a weight percent within the range as claimed, given the disclosure of Walker et al., one having ordinary skill in the art would recognize an optimal amount thereof to include in the injection fluid 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." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). 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 weight percent range for the cosolvent as critical and it is unclear if any unexpected results are achieved by providing for such within the recited weight percent range. Since Walker et al. is suggested as providing for improved flow paths by injection of the injection fluid as is instantly claimed and disclosed by Applicant, see for example, instant claim 17, iii), it does not appear that such would be considered an unexpected result of providing for the co-solvent within the weight percent range as claimed, and, as such, the determination of optimal percent thereof would be achievable through routine experimentation in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20190201858 discloses HLB values for forming a water-in-oil emulsion as from 2 to 10.
US 2017/0334840 discloses an alkoxylated surfactant having 15 PO and 10 EO used as an emulsifier.
CN 108517204 A discloses a three-in-one acidizing blockage removing agent that comprises polyoxyethylene polyoxypropylene octodecyl alcohol ether and polyoxyethylene-polyoxypropylene block copolymer, acetic acid, hydrogen fluoride and a solvent.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
07/16/26
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