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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Applicant's submission filed on 01/16/2026 has been entered.
Response to Arguments
Applicant's arguments filed on 01/06/2026 with regards to objection of claim 10-15 have been fully considered but they are not persuasive. The applicant has not amended the claims to resolve the objection, therefore, the objection to the claims have been maintained.
Applicant’s arguments, filed on 01/06/2026, with respect to the rejection(s) of Claims 9, 11, 12, 13, and 14 rejected under 35 U.S.C. 103 as being unpatentable over Dyer (US 2012/0234548) and further in view of Smith et al. and Claims 9-15 rejected under 35 U.S.C. 103 as being unpatentable over Malwitz et al. (US 2013/0112106 A1), Dyer (US 2012/0234548) and further in view of Smith et al. (US 2021/0340433 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
Claim Objections
Claim Objections Claims 10-15 and 21 are objected to because of the following informalities: The limitation "about" does not provide an exactitude of a range but rather a contemplated variations 10-15. 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.
Claim 21 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.
Claim 21 recites “about 10 volume % of an organic acid solution comprising the organic acid and water, wherein the organic acid solution comprises about 5 wt.% of the organic acid;” however, this subject matter was not described in the specification. See for instance specification ¶ [0026] The organic acid of the treatment fluid 152 can be or include, for example, acetic acid, formic acid, lactic acid, or any combinations of these. When included in the treatment fluid 152, the organic acid can be provided at an acid concentration in a range of 3 wt.% to 11 wt.%, 3 wt.% to 10 wt.%, or 3 wt.% to 9 wt.% (such as about 5 wt.%), as opposed to being provided as pure (100 wt.%) acid. In some implementations, the treatment fluid 152 includes about 5 wt.% to about 13 wt.% of the organic acid (which can have an acid concentration in a range of 3 wt.% to 11 wt.% itself). For example, the treatment fluid 152 can include about 5 wt.% to about 13 wt.% of an acetic acid solution having an acetic acid concentration of about 5 wt.%. The presence of both the organic acid and the surfactant in the treatment fluid 152 can synergistically improve solubility of the sludge 160 (both organic and inorganic phases of the sludge 160) for effectively removing the obstruction in the well 100.
Consequently, the new amended claim limitation is a new matter not supported by the specification.
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 21 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 21 recites limitations that are not supported by the specification, therefore, it is unclear the boundaries of the claim making it 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 9, 11, 12, 13, and 14 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated Shumway et al. (US 2014/0113843 A1) (“Shumway” herein).
Claim 9
Shumway disclose a subterranean formation, the composition comprising: .
an organic solvent configured to dissolve at least a first portion of an organic phase of the hydrocarbon sludge; [0059]
a surfactant comprising a quaternary ammonium compound. [0025-0026]
an organic acid configured to dissolve at least a portion of an inorganic phase of the hydrocarbon sludge, wherein the surfactant and the organic acid are synergistically configured to increase solubility of the hydrocarbon sludge upon exposure to the composition; wherein the organic acid is lactic acid [0013-0014] and
a mutual solvent that is soluble in oil and in water configured to dissolve at least a second portion of the organic phase of the hydrocarbon sludge, wherein the mutual solvent is configured to increase solubility of the organic acid in the composition [0059] and
the carrier fluid comprising diesel. [0046]
Since Shumway discloses the same composition comprising an solvent, a surfactant such as cationic ammonium compound , and an organic acid such as lactic acid, it would be a composition for downhole dissolution of hydrocarbon sludge, an organic solvent configured to dissolve at least a first portion of an organic phase of the hydrocarbon sludge; an organic acid configured to dissolve at least a portion of an inorganic phase of the hydrocarbon sludge, the organic acid that synergistically configured to increase solubility of the hydrocarbon sludge upon exposure to the composition; and a mutual solvent that is soluble in oil and in water. wherein the mutual solvent is configured to dissolve at least a second portion of the organic phase of the hydrocarbon sludge, wherein the mutual solvent is configured to increase solubility of the organic acid in the composition.
"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. See MPEP 2112.01 (I), 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
Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 12
Shumway discloses the composition of claim 9, wherein the composition comprises about 0.2 wt.% to about 0.5 wt.% of the surfactant. [0025-0026]
Claim 11
Shumway discloses the composition of claim 9, wherein the mutual solvent comprises
ethylene glycol monobutyl ether (EGBE), methanol, isopropyl alcohol, or any
combinations thereof, wherein the composition comprises about 10 wt. % to about 20
wt. % of the mutual solvent. [0059]
Claim 14
Shumway discloses the composition of claim 9, wherein the organic acid comprises about 5 wt.% to about 13 wt.% of the organic acid. [003-0014]
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 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.
Claims 9, 10, 11, 12, 13, 14, 15, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Dyer (US 2012/0234548) ("Dyer" herein - cited previously), and further in view of Shumway et al. (US 2014/0113843 A1) (“Shumway” herein).
Claim 9
Dyer discloses a composition for downhole dissolution of a hydrocarbon sludge in a subterranean formation, the composition comprising: [0024]
an organic solvent configured to dissolve at least a first portion of an organic phase of the hydrocarbon sludge; [0043-0044]
a surfactant; [0038-0039]
an organic acid configured to dissolve at least a portion of an inorganic phase of the hydrocarbon sludge, wherein the surfactant and the organic acid are synergistically configured to increase solubility of the hydrocarbon sludge upon exposure to the composition; [0041] and
a mutual solvent that is soluble in oil and in water configured to dissolve at least a second portion of the organic phase of the hydrocarbon sludge, wherein the mutual solvent is configured to increase solubility of the organic acid in the composition. [0041] and
the carrier fluid comprising diesel. [0042]
Dyer however does not explicitly disclose the organic acid is lactic acid and the surfactant as a quaternary ammonium compound.
Shumway teaches the above limitation (See paragraphs 0013, 0014, & 0025 →Shumway teaches this limitation in that Nonlimiting examples of acids suitable for use in the present disclosure include acetic acid; lactic acid; glycolic acid; oxalic acid; propionic acid; butyric acid; monochloroacetic acid; dichloroacetic acid; trichloroacetic acid; hydrochloric acid; nitric acid; sulphuric acid; sulphonic acid; sulphinic acid; phosphoric acid; phosphorous acid; phosphonic acid; phosphinic acid; sulphamic acid; or combinations thereof. The acid may be included within the COMP in a suitable amount. In an embodiment an acid of the type disclosed herein may be present within the COMP in an amount of from about 5 wt. % to about 40 wt. %,Nonlimiting examples of surfactants suitable for use in the COMP include ethoxylated nonyl phenol phosphate esters, nonionic surfactants, cationic surfactants, anionic surfactants, amphoteric/zwitterionic surfactants, alkyl phosphonate surfactants, linear alcohols, nonylphenol compounds, alkyoxylated fatty acids, alkylphenol alkoxylates, ethoxylated amides, ethoxylated alkyl amines, betaines, methyl ester sulfonates, hydrolyzed keratin, sulfosuccinates, taurates, amine oxides, alkoxylated fatty acids, alkoxylated alcohols, lauryl alcohol ethoxylate, ethoxylated nonyl phenol, ethoxylated fatty amines, ethoxylated alkyl amines, cocoalkylamine ethoxylate, betaines, modified betaines, alkylamidobetaines, cocoamidopropyl betaine, quaternary ammonium compounds, trimethyltallowammonium chloride, trimethylcocoammonium chloride, or combinations thereof.) for the purpose being used to treat or clean oil-wet solids such as drill cuttings transported to the surface via a drilling fluid and separated therefrom. [0012]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Dyer, with the above limitation, as taught by Shumway, in order to be used to treat or clean oil-wet solids such as drill cuttings transported to the surface via a drilling fluid and separated therefrom.
Since Dyer teaches the same composition comprising an organic solvent, a surfactant such as cationic ammonium compound , and an organic acid such as lactic acid, it would be a composition for downhole dissolution of hydrocarbon sludge, an organic solvent configured to dissolve at least a first portion of an organic phase of the hydrocarbon sludge; an organic acid configured to dissolve at least a portion of an inorganic phase of the hydrocarbon sludge, the organic acid that synergistically configured to increase solubility of the hydrocarbon sludge upon exposure to the composition; and a mutual solvent that is soluble in oil and in water. wherein the mutual solvent is configured to dissolve at least a second portion of the organic phase of the hydrocarbon sludge, wherein the mutual solvent is configured to increase solubility of the organic acid in the composition.
"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. See MPEP 2112.01 (I), 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
Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 10.
Dyer discloses the composition of claim 9, wherein the organic solvent comprises xylene, toluene, heavy naphtha, or any combinations thereof, wherein the composition comprises about 45 wt.% to about 55 wt.% of the organic solvent. [0043-0044]
Claim 11
Dyer discloses the composition of claim 9, wherein the mutual solvent comprises
ethylene glycol monobutyl ether (EGBE), methanol, isopropyl alcohol, or any
combinations thereof, wherein the composition comprises about 10 wt. % to about 20
wt. % of the mutual solvent. [0042]
Claim 12
Dyer discloses the composition of claim 9, wherein the composition comprises about 0.2 wt.% to about 0.5 wt.% of the surfactant. [0038-0039]
Claim 13
Dyer discloses the composition of claim 9, wherein the composition comprises a carrier fluid comprising diesel, wherein the composition comprises about 20 wt. % to about 50 wit. % of the carrier fluid. [0042]
Claim 14
Dyer discloses the composition of claim 9, wherein the organic acid comprises about 5 wt.% to about 13 wt.% of the organic acid. [0041]
Claim 15.
Dyer discloses thee composition of claim 9, wherein the composition comprises:
about 45 wt.% to about 55 wt.% of the organic solvent, wherein the organic solvent comprises xylene, toluene, heavy naphtha, or any combinations thereof; [0043-0044]
about 0.2 wt.% to about 0.5 wt.% of the surfactant; [0038-0039]
about 5 wt.% to about 13 wt.% of the organic acid; [0041]
about 10 wt.% to about 20 wt.% of the mutual solvent, wherein the mutual solvent comprises ethylene glycol monobutyl ether (EGBE), methanol, isopropyl alcohol, or any combinations thereof; [0042] and
about 20 wt.% to about 50 wt.% of the carrier fluid. [0042]
Claim 21.
Dyer discloses, as best understood based on the indefinites above, the composition of claim 9, wherein the composition comprises:
about 54.7 wt.% of the organic solvent, wherein the organic solvent comprises xylene, toluene, heavy naphtha, or any combinations thereof; [0043-0044]
about 0.3 wt.% of the surfactant; [0038-0039]
about an organic acid solution comprising the organic acid and water, wherein the organic acid solution comprises about 5 wt.% of the organic acid. [0028, 0041]
about 10 wt.% of the mutual solvent, wherein the mutual solvent comprises ethylene glycol monobutyl ether (EGBE), methanol, isopropyl alcohol, or any combinations thereof; [0042] and
about 25 wt.% of the carrier fluid. [0042]
Dyer disclose the claim invention except for the about 10 volume % of an organic acid solution comprising the organic acid and water. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the about 10 volume % of an organic acid solution comprising the organic acid and water, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involve only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 10, 13, 15, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over and further in view of Shumway et al. (US 2014/0113843 A1) (“Shumway” herein) and Dyer (US 2012/0234548) ("Dyer" herein - cited previously)
Claim 10.
Shumway discloses the composition of claim 9 . Shumway however does not exilically disclose wherein the organic solvent comprises xylene, toluene, heavy naphtha, or any combinations thereof, wherein the composition comprises about 45 wt.% to about 55 wt.% of the organic solvent. [0043-0044]
Claim 13
Shumway discloses the composition of claim 9. Shumway however does not explicitly disclose, wherein the composition comprises a carrier fluid comprising diesel, wherein the composition comprises about 20 wt. % to about 50 wit. % of the carrier fluid. (Same as claim 15)
Claim 15.
Shumway discloses the composition of claim 9, wherein the composition comprises:
the organic solvent, wherein; [0059]
about 0.2 wt.% to about 0.5 wt.% of the surfactant; [0025-0026]
about 5 wt.% to about 13 wt.% of the organic acid; [0013-0014]
about 10 wt.% to about 20 wt.% of the mutual solvent, wherein the mutual solvent comprises ethylene glycol monobutyl ether (EGBE), methanol, isopropyl alcohol, or any combinations thereof; [0059] and
of the carrier fluid. [0046]
Shumway does not explicitly disclose the about 20 wt.% to about 50 wt.% the carrier fluid. And the organic solvent comprises xylene, toluene, heavy naphtha, or any combinations thereof, wherein the composition comprises about 45 wt.% to about 55 wt.% of the organic solvent.
Dyer teaches the above limitation (See paragraphs 0042-0044→ Dyer teaches this limitation in that The hydrocarbon solvent constitutes from about 10% by weight to about 40.0% by weight based upon the total weight of the emulsion, and preferably from about 15% to about 35%. The hydrocarbon solvents suitable for use in accordance with the present invention include kerosene, gasoline, diesel, jet fuel, zylene and mixtures thereof. The preferred solvent is kerosene. The hydrocarbon terpene material used constitutes from about 10% to about 40%, by weight, based upon the total weight of the emulsion. The terpene hydrocarbon material is an unsaturated terpene hydrocarbon material, preferably an unsaturated cyclic terpene hydrocarbon containing 10 carbon atoms and selected from limonene, dipentene, pinene, alpha-pinene, beta-pinene, mixtures of alpha- and beta-pinene, carene, delta-3-carene, etc.) for the purpose of simultaneously removing asphaltene and/or paraffin and scale from such wells with eco-friendly compositions used under adverse weather conditions. [0003]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Shumway with the above limitation, as taught by Dyer, in order to simultaneously remove asphaltene and/or paraffin and scale from such wells with eco-friendly compositions used under adverse weather conditions.
Claim 21.
Shumway discloses, as best understood based on the indefinites above, the composition of claim 9, wherein the composition comprises:
the organic solvent, [0059]
about 0.3 wt.% of the surfactant; [0025-0026]
about an organic acid solution comprising the organic acid and water, wherein the organic acid solution comprises about 5 wt.% of the organic acid. [0012-0014, 0059]
about 10 wt.% of the mutual solvent, wherein the mutual solvent comprises ethylene glycol monobutyl ether (EGBE), methanol, isopropyl alcohol, or any combinations thereof; [0059] and
about 25 wt.% of the carrier fluid. [0042]
Shumway does not explicitly disclose the about 25 wt.% the carrier fluid and about 54.7 wt.% of the organic solvent, wherein the organic solvent comprises xylene, toluene, heavy naphtha, or any combinations thereof; (Same as claim 15)
Conclusion
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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/SILVANA C RUNYAN/ Primary Examiner, Art Unit 3674 03/16/2026