DETAILED ACTION
Response to Amendment
The Amendment filed 20 November 2025 has been entered. Claims 1-12 remain pending in the application. Claims 13-15 were previously withdrawn as being drawn to non-elected Inventions. Applicant’s Amendments to the Specification and Claims have overcome the Objections previously set forth in the Non-Final Office Action mailed 21 August 2025.
Election/Restrictions
As previously, Applicant elected without traverse Group I, claims 1-12, as well as the Species of “(iii) the tallow amine ethoxylate is present in the composition at an amount of about 2.5 % to about 15 %, by weight, based on the weight of the composition” concentration metric; “TAM-5” tallow amine ethoxylate; “acrylamide tertiary butyl sulfonic acid (ATBS)” sulfonic monomer; and “an acrylamide repeat unit” other repeat unit. Applicant’s Amendment filed 20 November 2025 removes the elected Species of “(iii) the tallow amine ethoxylate is present in the composition at an amount of about 2.5 % to about 15 %, by weight, based on the weight of the composition” concentration metric, and thus no claims would be currently under examination.
However, based on the cited Prior Art of record, the Species Election requirement is hereby withdrawn for the Species of concentration metric; and tallow amine ethoxylate, insofar as they currently appear to be merely obvious variants in view of Yang; TOXIMUL® TA-2, TA-5, TA-8, and TA-15 Product Bulletin NPL; and Amine Ethoxylates NPL. The Species Election requirement for the elected Species of “acrylamide tertiary butyl sulfonic acid (ATBS)” sulfonic monomer; and “an acrylamide repeat unit” other repeat unit are maintained at this time. Accordingly, claims 1-12 are under examination, despite being drawn to the Species of “(i) the breaker is present in the composition at an amount of about 2.5% to about 50%, by weight, based on the weight of the composition” concentration metric.
Nevertheless, Applicant should note that this Species Election may be “reinstated” at a later time, should Amendments be presented (or Art become of record) requiring distinction between the Species.
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 6-12 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 Yang (2022/0127518) (cited previously).
Regarding independent claim 1, Yang discloses A composition (abstract “liquid polymer and inverse emulsion compositions comprising one or more hydrophobic liquids having a boiling point at least about 100° C; one or more acrylamide-(co)polymers; one or more emulsifier surfactants; one or more inverting surfactants”) comprising:
water ([0055] “In embodiments, the inverse emulsion composition further comprises water”);
a hydrophobic liquid ([0087] “In embodiments, the liquid polymer or inverse emulsion composition comprises a hydrophobic liquid component”);
a polymer comprising two or more different repeat units ([0066] “In embodiments, the liquid polymer or inverse emulsion composition comprises at least … copolymer”); and
a breaker comprising one or more inverting surfactants ([0099] “In embodiments, the liquid polymer or inverse emulsion composition optionally comprises one or more inverting surfactants”);
wherein the one or more inverting surfactants comprises a tallow amine ethoxylate ([0100] “Examples of inverting surfactants also include… tallow amine ethoxylates”);
wherein the two or more different repeat units comprise a repeat unit comprising a sulfonic acid moiety or a sulfonate moiety ([0067] “Examples of suitable synthetic (co)polymers include … polyacrylamide derivatives such as acrylamide tertiary butyl sulfonic acid (ATBS)”; and [0080] “In an embodiment, each of the one or more acrylamide-(co)polymers comprises at least one monoethylenically unsaturated comonomer comprising acid groups, for example monomers which comprise at least one group selected from —COOH, —SO3H, —PO3H2, or —PO4H2. Examples of such monomers include but are not limited to acrylic acid, methacrylic acid, vinylsulfonic acid, allylsulfonic acid or 2-acrylamido-2-methylpropanesulfonic acid” i.e. a copolymer of acrylamide and ATBS/AMPS or vinylsulfonic acid or allylsulfonic acid); and
wherein –
(i) the breaker is present in the composition at an amount of about 2.5% to about 50%, by weight, based on the weight of the composition ([0102] “In embodiments, the amount of the one or more inverting surfactants in the liquid polymer or inverse emulsion composition is from about 0.5% to about 10%, or from about 1% to about 6% by weight based on the total amount of all components of the liquid polymer or inverse emulsion composition”; this clearly anticipates e.g. 3.5 wt%, which anticipates the claimed range); and
wherein the breaker does not include a PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol (e.g., [0099] “the liquid polymer or inverse emulsion composition optionally comprises one or more inverting surfactants” wherein [0100] “Examples of inverting surfactants also include … tallow amine ethoxylates”; if just “one” inverting surfactant that is “tallow amine ethoxylates” is used, this would necessarily not include any PEG monooleate, ethoxylated sorbitol ester, or ethoxylated alcohol).
As above, even if it were found that Yang fails to implicitly or inherently disclose the tallow amine ethoxylate inverting surfactant in an amount of e.g. 2.5-10 wt% of the inverse emulsion, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Yang to include providing “tallow amine ethoxylate” as “one” inverting surfactant in an amount of 2.5-10 wt%, with a reasonable expectation of success, in order to provide a suitable inverting surfactant in a suitable amount within the general conditions disclosed by Yang. Applicant may note that, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Applicant should also note that the claim merely requires “wherein the breaker does not include a PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol” and thus this does not actually require the composition as a whole to exclude all three of PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol, but rather merely that the breaker excludes PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol.
Regarding claim 2, Yang discloses e.g., “the liquid polymer or inverse emulsion composition optionally comprises one or more inverting surfactants” ([0099]) wherein “Examples of inverting surfactants also include … tallow amine ethoxylates” ([0100]). If just “one” inverting surfactant that is “tallow amine ethoxylates” is used as the inverting surfactant, and the “breaker” in the claims is drawn to the tallow amine ethoxylates inverting surfactant, then the breaker would be 100% tallow amine ethoxylates, thereby anticipating “wherein the tallow amine ethoxylate is present in the breaker at an amount of at least 90%, by weight, based on the weight of the breaker.”
Regarding claim 3, Yang discloses “Examples of inverting surfactants also include… tallow amine ethoxylates” ([0100]).
The “tallow” in tallow amine ethoxylates refers to animal fats, of which the primary free fatty acid components are well-known to primarily include oleic acid (C18H34O2), along with palmitic acid (C16H32O2), stearic acid (C18H36O2), myristic acid (C14H28O2), and linoleic acid (C18H32O2). Additionally, because it is a “tallow amine ethoxylate” and not a “ditallow amine ethoxylate,” it has one tallow head and two ethoxylate tails connected by an amine, and the simplest “ethoxylates” would refer to a single ethoxy group for each tail group (i.e. X = 1 and Y = 1).
Applicant may note that if one of ordinary skill in the art is able to "at once envisage" the specific compound within the generic chemical formula, the compound is anticipated. See MPEP 2131.02.
Accordingly, Yang at least anticipates “wherein the tallow amine ethoxylate comprises a compound of Formula I:
wherein R1 is selected from the group consisting of a C14-C18 hydrocarbyl … wherein X and Y, independently, are 1 to 20,” for R1 = C18, X = 1, and Y = 1, as the simplest tallow amine ethoxylate.
Alternatively, even if it were somehow found that Yang fails to disclose a tallow amine ethoxylate with R1 = C18, X = 1, and Y = 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yang to include a tallow amine ethoxylate with R1 = C18, X = 1, and Y = 1, with a reasonable expectation of success, in order to provide a tallow amine ethoxylate with the simplest structure of a tallow amine ethoxylate.
Applicant may also see claim 5 below.
Regarding claim 6, Yang discloses wherein the repeat unit comprising a sulfonic acid moiety or a sulfonate moiety is derived from a monomer selected from the group consisting of acrylamide tertiary butyl sulfonic acid (ATBS), vinylsulfonic acid, allylsulfonic acid, 2-acrylamido-2-methylpropanesulfonic acid, 2-methacrylamido-2-methylpropanesulfonic acid, 2-acrylamidobutanesulfonic acid, 3-acrylamido-3-methylbutanesulfonic acid, and 2-acrylamido-2,4,4-trimethylpentanesulfonic acid ([0067] “Examples of suitable synthetic (co)polymers include … polyacrylamide derivatives such as acrylamide tertiary butyl sulfonic acid (ATBS)”; and [0080] “In an embodiment, each of the one or more acrylamide-(co)polymers comprises at least one monoethylenically unsaturated comonomer comprising acid groups, for example monomers which comprise at least one group selected from —COOH, —SO3H, —PO3H2, or —PO4H2. Examples of such monomers include but are not limited to acrylic acid, methacrylic acid, vinylsulfonic acid, allylsulfonic acid or 2-acrylamido-2-methylpropanesulfonic acid” i.e. a copolymer of acrylamide and ATBS/AMPS or vinylsulfonic acid or allylsulfonic acid).
Regarding claim 7, Yang discloses “In an embodiment, each of the one or more acrylamide-(co)polymers comprises at least one monoethylenically unsaturated comonomer comprising acid groups, for example monomers which comprise at least one group selected from —COOH, —SO3H, —PO3H2, or —PO4H2. Examples of such monomers include but are not limited to acrylic acid, methacrylic acid, vinylsulfonic acid, allylsulfonic acid or 2-acrylamido-2-methylpropanesulfonic acid… The amount of such comonomers comprising acid groups may be from about 0.1% to about 70%, about 1% to about 50%, or about 10% to about 50% by weight based on the amount of all monomers” ([0080]) and “In an embodiment, each of the one or more acrylamide-(co)polymers comprise from about 50% to about 90% by weight of acrylamide units” ([0081]).
For the ATBS/AMPS embodiment, 10-50 wt% of ATBS/AMPS at 207.24 g/mol molecular weight and 50-90 wt% of acrylamide at 71.079 g/mol would be ~4.09-33.6 mol% ATBS/AMPS:
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Accordingly, Yang anticipates wherein the repeat unit comprising the sulfonic acid moiety or the sulfonate moiety is present in the polymer at a mol% of about 0.1 to about 50.
Even if it were found that Yang fails to implicitly or inherently disclose 10-50 wt% of ATBS/AMPS and 50-90 wt% acrylamide in an acrylamide-ATBS/AMPS copolymer, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Yang to include these amounts, and thus also provide 0.1-50 mol% of the ATBS/AMPS, with a reasonable expectation of success, in order to provide a suitable amount of the ATBS/AMPS within the general conditions disclosed by Yang. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claim 8, Yang discloses wherein the two or more different repeat units further comprise an acrylamide repeat unit, an acrylic acid repeat unit, or a combination thereof ([0067] “Examples of suitable synthetic (co)polymers include … polyacrylamide derivatives such as acrylamide tertiary butyl sulfonic acid (ATBS)”; and [0080] “In an embodiment, each of the one or more acrylamide-(co)polymers comprises at least one monoethylenically unsaturated comonomer comprising acid groups, for example monomers which comprise at least one group selected from —COOH, —SO3H, —PO3H2, or —PO4H2. Examples of such monomers include but are not limited to acrylic acid, methacrylic acid, vinylsulfonic acid, allylsulfonic acid or 2-acrylamido-2-methylpropanesulfonic acid” i.e. a copolymer of acrylamide and ATBS/AMPS or vinylsulfonic acid or allylsulfonic acid).
Regarding claim 9, as in claim 7, for the ATBS/AMPS embodiment, 10-50 wt% of ATBS/AMPS at 207.24 g/mol molecular weight and 50-90 wt% of acrylamide at 71.079 g/mol would be ~4.09-33.6 mol% ATBS/AMPS, and thus ~66.4-95.9 mol% acrylamide. Accordingly, Yang anticipates wherein the acrylamide repeat unit is present in the polymer at a mol% of about 50 to about 99.9.
Even if it were found that Yang fails to implicitly or inherently disclose 10-50 wt% of ATBS/AMPS and 50-90 wt% acrylamide in an acrylamide-ATBS/AMPS copolymer, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Yang to include these amounts, and thus also provide 50-99.9 mol% of the acrylamide, with a reasonable expectation of success, in order to provide a suitable amount of the acrylamide within the general conditions disclosed by Yang. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claim 10, Yang discloses a chain transfer agent ([0145] “In certain embodiments, one or more chain transfer agents may be added to the mixture during polymerization. Generally, chain transfer agents have at least one weak chemical bond, which therefore facilitates the chain transfer reaction. Any conventional chain transfer agent may be employed, such as propylene glycol, isopropanol, 2-mercaptoethanol, sodium hypophosphite, dodecyl mercaptan, thioglycolic acid, other thiols and halocarbons, such as carbon tetrachloride”).
Regarding the 1-2000 ppm, Yang further discloses “The chain transfer agent is generally present in an amount of about 0.001 percent to about 10 percent by weight of the total emulsion, though more may be used” ([0145]) = 10-100,000 ppm. Accordingly, Yang anticipates wherein the chain transfer agent is present in the composition at a concentration of about 1 ppm to about 2,000 ppm.
Even if it were found that Yang fails to implicitly or inherently disclose 1-2000 ppm chain transfer agent, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Yang to include these amounts, with a reasonable expectation of success, in order to provide a suitable amount of the chain transfer agent within the general conditions disclosed by Yang. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claim 11, Yang discloses An inverted emulsion ([0162] “According to various embodiments, a method for preparing an inverted polymer solution may include inverting and diluting a liquid polymer or inverse emulsion composition according to the embodiments described herein in an aqueous solution to provide an inverted polymer solution”) comprising:
the composition of claim 1 (i.e., the “inverse emulsion composition”); and
an additional amount of water ([0162] “In embodiments, the liquid polymer or inverse emulsion composition and an aqueous solution are mixed until the liquid polymer or inverse emulsion composition is inverted in an aqueous solution to provide an inverted polymer solution” and [0186] “The aqueous fluid used to invert the liquid polymer or inverse emulsion composition can comprise produced reservoir brine, reservoir brine, sea water, fresh water, produced water, water, saltwater (e.g. water containing one or more salts dissolved therein), brine, synthetic brine, synthetic seawater brine, or any combination thereof”);
wherein the polymer comprising two or more different repeat units is present in the inverted emulsion at a concentration of about 50 ppm to about 15,000 ppm ([0166] “In some embodiments, the inverted polymer solution can have a concentration of one or more synthetic (co)polymers (e.g., one or more acrylamide (co)polymers)of at least 50 ppm” and [0167] “In some embodiments, the inverted polymer solution can have a concentration of one or more synthetic (co)polymers (e.g., one or more acrylamide (co)polymers) of 15,000 ppm or less”),
wherein “inverted” means that the composition is dispersed in an aqueous liquid, so that that a dispersed polymer phase of the composition becomes a substantially continuous phase, and a hydrophobic liquid phase becomes a dispersed, discontinuous phase ([0031] “As used herein, “inverted” means that the liquid polymer or inverse emulsion composition is dissolved in an aqueous solution, so that the dispersed polymer phase of the liquid polymer or inverse emulsion composition becomes a substantially continuous phase, and the hydrophobic liquid phase becomes a dispersed, discontinuous phase”).
Regarding claim 12, Yang discloses wherein the additional amount of water comprises a brine ([0186] “The aqueous fluid used to invert the liquid polymer or inverse emulsion composition can comprise produced reservoir brine, reservoir brine, sea water, fresh water, produced water, water, saltwater (e.g. water containing one or more salts dissolved therein), brine, synthetic brine, synthetic seawater brine, or any combination thereof”).
Claim Rejections - 35 USC § 103
Claim 4 is rejected under 35 U.S.C. 103 as obvious over Yang as in claim 1, and further in view of Li (2016/0032170) and Delorey (2008/0217012) (both cited previously).
Regarding claim 4, Yang discloses “The one or more inverting surfactants are not those which are used as emulsifying surfactants in the embodiments. Inverting surfactants include, but are not limited to, ethoxylated alcohols, alcohol ethoxylates, ethoxylated esters of sorbitan, ethoxylated esters of fatty acids, ethoxylated fatty acid esters, and ethoxylated esters of sorbitol and fatty acids, or any combination of the preceding. … The HLB-value may be adjusted by selecting the number of ethoxy groups. … Examples of inverting surfactants also include modified polyester surfactants, anhydride substituted ethylene copolymers, N,N-dialkanol substituted fatty amides, and tallow amine ethoxylates” ([0100]).
However, Yang fails to specify what is a suitable HLB value for the inverting surfactants such as the tallow amine ethoxylates.
Nevertheless, it is rather well-known that inverting surfactants require a high HLB, such as 9-16. For example, the reference to Li teaches “Emulsions of mobility control polymers can be used to increase recovery of crude oil from a subterranean hydrocarbon-containing formation” (abstract) wherein “The water soluble polymer can be a synthetic polymer, or it can be a biopolymer. A common synthetic polymer used as a mobility control polymer is an anionic, high molecular weight polyacrylamide, produced by the copolymerization of acrylamide with an anionic monomer such as sodium acrylate or sodium 2-acrylamido-2-methylpropanesulfonate” ([0040]) and “Typically, the polymer emulsion is “inverted,” or converted into a water-continuous emulsion with the aid of a high HLB surfactant and high shear, during the dilution process” ([0039]), such as wherein “the inverting surfactant can have a HLB of from about 8 to about 19.5; from about 9 to about 19.5, or from about 10 to about 19.5” ([0032]).
Accordingly, although silent to the exact HLB range as claimed, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Yang to include “wherein the tallow amine ethoxylate has an HLB-value of about 9 to about 16,” with a reasonable expectation of success, in order to provide a suitable HLB value to the tallow amine ethoxylate inverting surfactant within the general conditions known to be appropriate for inverting surfactants. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Although not required to render obvious the claim, Applicant may further note that it is well-known that tallow amine ethoxylates can have HLBs of 9-16. For example, Delorey provides evidence that tallow amine ethoxylates in the art are known to have HLBs of 9-16, stating “Ethox TAM-25” which is an “Ethoxylated Tallow Amine POE(25) C-16-18” from Ethox which has an HLB of “16.0” ([0062] and Table 1). Applicant may also see claim 5 below.
Claim 5 is rejected under 35 U.S.C. 103 as obvious over Yang as in claim 1, and further in view of TOXIMUL® TA-2, TA-5, TA-8, and TA-15 Product Bulletin NPL (Stepan; Dec. 2011) and Amine Ethoxylates NPL (HARCROS) (both cited previously).
Regarding claim 5, Yang discloses “The one or more inverting surfactants are not those which are used as emulsifying surfactants in the embodiments. Inverting surfactants include, but are not limited to, ethoxylated alcohols, alcohol ethoxylates, ethoxylated esters of sorbitan, ethoxylated esters of fatty acids, ethoxylated fatty acid esters, and ethoxylated esters of sorbitol and fatty acids, or any combination of the preceding. … The HLB-value may be adjusted by selecting the number of ethoxy groups. … Examples of inverting surfactants also include modified polyester surfactants, anhydride substituted ethylene copolymers, N,N-dialkanol substituted fatty amides, and tallow amine ethoxylates” ([0100]).
However, Yang fails to specify using TAM-2, TAM-5, TAM-8, TAM-10, TAM-15, or TAM-20, which correspond to 2, 5, 8, 10, 15, or 20 ethoxy groups, respectively.
Nevertheless, these are well-known tallow amine ethoxylates. For example, TOXIMUL® TA-2, TA-5, TA-8, and TA-15 Product Bulletin NPL states “TOXIMUL TA surfactants are ethoxylated tallow amines with approximately two to fifteen moles of ethylene oxide” and refers to TA-5 (i.e. TAM-5), TA-8 (i.e. TAM-8), and TA-15 (i.e. TAM-15), and which have HLBs of 9, 11, and 14, respectively.
Similarly, Amine Ethoxylates NPL states T-Def® TAM 2 as “PEG 2 Tallow Amine,” T-Def® TAM 5 as “PEG 5 Tallow Amine,” T-Def® TAM 10 as “PEG 10 Tallow Amine,” T-Def® TAM 15 as “PEG 15 Tallow Amine,” and T-Def® TAM 20 as “PEG 20 Tallow Amine,” and which have HLBs of 10.1, 12, 12.4, 14.7, and 15.3, respectively.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yang to include any specific tallow amine ethoxylate with selected number of ethoxy groups, with a reasonable expectation of success, in order to provide a suitable tallow amine ethoxylate inverting surfactant with an adjusted HLB-value as known in the art (thereby providing “wherein the tallow amine ethoxylate comprises TAM-2, TAM-5, TAM-8, TAM-10, TAM-15, TAM-20, or a combination thereof”).
Second, the modification is obvious as no more than the use of familiar elements (known tallow amine ethoxylates; water; hydrophobic liquid; acrylamide copolymers; emulsifiers) according to known techniques (inverting an inverse emulsion) in a manner that achieves predictable results (an inverted inverse emulsion i.e. a O/W emulsion). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). See MPEP 2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness.
For example, the Office observes that Applicant has failed to disclose any criticality to using any of these specific tallow amine ethoxylates, in particular, as opposed to any other tallow amine ethoxylates which are inverting surfactants e.g. TAM-3, TAM-4, TAM-6, TAM-7, TAM-9, etc., and Yang has already disclosed using tallow amine ethoxylate inverting surfactants generally. Indeed, Applicant’s data instead appears to demonstrate that the effect of the tallow amine ethoxylate is consistent regardless of which is used, as in current Figs. 3 & 4.
Double Patenting
Claims 1 and 3-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,753,580 in view of Li, Delorey and TOXIMUL® TA-2, TA-5, TA-8, and TA-15 Product Bulletin NPL, and Yang (all cited above).
Regarding independent claim 1, this corresponds to 11,753,580 claims 1 and 9. For example, if 11,753,580 claim 9 selects “wherein the one or more inverting surfactants are selected from the group consisting of … tallow amine ethoxylates,” then 11,753,580 claim 1 anticipates “wherein the breaker does not include a PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol,” by virtue of only the tallow amine ethoxylates being provided as the “one” inverting surfactant and not the PEG monooleate, an ethoxylated sorbitol ester or an ethoxylated alcohol. Additionally, 11,753,580 claim 1 requires “up to about 38% by weight of one or more acrylamide-(co)polymers” and “water in an amount greater than about 12% by weight based on the total amount of all components of the composition”, then 11,753,580 claim 1 either anticipates or renders obvious “(i) the breaker is present in the composition at an amount of about 2.5% to about 50%, by weight, based on the weight of the composition,” by virtue of the 38 wt% acrylamide-(co)polymers and the >12 wt% water being 38+12 = >50 wt% of the composition.
Regarding claims 3 and 5, these would be obvious in view of Delorey and TOXIMUL® TA-2, TA-5, TA-8, and TA-15 Product Bulletin NPL as above, as specific tallow amine ethoxylates.
Regarding claim 4, this would be obvious in view of Li as above, as typical HLBs for inverting surfactants.
Regarding claim 6, this corresponds to 11,753,580 claim 1.
Regarding claim 7, this would be obvious over 11,753,580 claims 10 and 11, as a specific amount of AMPS within the general conditions claimed by 11,753,580 claims.
Regarding claim 8, this corresponds to 11,753,580 claim 1.
Regarding claim 9, this would be obvious over 11,753,580 claim 10, as a specific amount of acrylamide within the general conditions claimed by 11,753,580 claims.
Regarding claim 10, this would be obvious over Yang as above, to facilitate a chain transfer reaction during polymerization.
Regarding claim 11, this corresponds with 11,753,580 claims 1 and3.
Regarding claim 12, this corresponds with 11,753,580 claim 2.
Response to Arguments
Applicant's arguments filed 20 November 2025 with respect to claims rejected under 35 USC § 102 and/or 103 over Yang have been fully considered but they are not persuasive.
In Applicant’s arguments, first, Applicant states “The use of a tallow amine ethoxylate breaker without a PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol provides notable and unexpected benefits over the prior art. As a particular example, the inventors discovered that using such a composition as the breaker yielded significant benefits from the standpoint of reducing friction and in reducing viscosity. Surprisingly, the resulting composition functions well in use, without the need to pre-hydrate the composition, making it simpler and more efficient than the prior art” (p.7).
The Office appreciates this information, but these “notable and unexpected benefits” do not appear to be recited anywhere in the claims. Accordingly, they cannot be given much patentable weight, especially in the context of a 102 rejection over Yang.
Second, Applicant states “Although Yang teaches the use of tallow amine ethoxylate (TAM) as inverting surfactants, they also teach the combination of TAM with other surfactants and components of other kinds, including PEG monooleate, an ethoxylated sorbitol esters and ethoxylated alcohols (see e.g. Yang paragraph [0100])” (p.8).
However, Applicant should note that this is incorrect. Yang does not require the combination of TAM with other surfactants. Rather, Yang plainly states “The one or more inverting surfactants are not those which are used as emulsifying surfactants in the embodiments. Inverting surfactants include, but are not limited to, ethoxylated alcohols, alcohol ethoxylates, ethoxylated esters of sorbitan, ethoxylated esters of fatty acids, ethoxylated fatty acid esters, and ethoxylated esters of sorbitol and fatty acids, or any combination of the preceding. Inverting surfactants include nonionic surfactants comprising a hydrocarbon group and a polyalkylenoxy group of sufficient hydrophilic nature. In certain embodiments, nonionic surfactants of the general formula R1—O—(CH(R2)—CH2—O)nH (I) may be used, wherein R1 is a C8-C22-hydrocarbon group, preferably an aliphatic C10-C18-hydrocarbon group, n is a number of preferably and R2 is H, methyl or ethyl with the proviso that at least 50% of the groups R2 are H. Examples of such surfactants include polyethoxylates based on C10-C18-alcohols such as C12/14-, C14/18- or C16/18-fatty alcohols, C13- or C13/15-oxoalcohols. The HLB-value may be adjusted by selecting the number of ethoxy groups. Specific examples include tridecylalcohol ethoxylates comprising from 4 to 14 ethylenoxy groups, e.g. tridecyalcohol·8 EO or C12/14 fatty alcohol ethoxylates, e.g. C12/14·8 EO. Examples of inverting surfactants also include modified polyester surfactants, anhydride substituted ethylene copolymers, N,N-dialkanol substituted fatty amides, and tallow amine ethoxylates” ([0100]).
This disclosure clearly only requires “one” of the surfactants, which may be “tallow amine ethoxylates,” and does not require a combination of the surfactants (e.g. “or more”). Furthermore, if just “one” inverting surfactant that is “tallow amine ethoxylates” is used, this would necessarily exclude any PEG monooleate, ethoxylated sorbitol ester, or ethoxylated alcohol).
Second, the Office observes that the claim merely requires “wherein the breaker does not include a PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol,” not e.g. “wherein the composition does not include a PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol.” Thus this does not actually require the composition as a whole to exclude all three of PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol, but rather merely that the breaker excludes PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol. If the breaker is drawn to Yang’s tallow amine ethoxylate only, then the breaker would necessarily not include PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol even if the composition included PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol.
Accordingly, this argument cannot be persuasive because Yang does not require PEG monooleate, an ethoxylated sorbitol ester and/or an ethoxylated alcohol; and moreover the argument does not even correspond to the current claim language.
Applicant advances substantially the same arguments with respect to the Double Patenting rejections over U.S. Patent No. 11,753,580. Accordingly, they are not persuasive for the same reasons.
As previously in the Conclusion, in the case of further Amendments, Applicant is advised to consider what are the critical features of the current Invention, and how do these critical features interact in the Invention in order to produce the unique phenomena of the Invention.
For example, Applicant could consider incorporating withdrawn claim 15 (“wherein the inverted emulsion achieves a friction reduction that is at least 12 percentage points greater than a comparative friction reduction achieved by a comparative inverted emulsion comprising a comparative breaker comprising 30%, by weight, or less of a tallow amine ethoxylate, based on the weight of the comparative breaker”), which is directed to an effect of using tallow amine ethoxylate inverting surfactant in particular. However, the effect as in claim 15 would appear to be expected over Waterman (2017/0362487) (also cited previously), which teaches an exemplary emulsion with polyoxyethylene tallow amine which demonstrates max friction reduction of 52% vs. 37% without the tallow amine ethoxylate ([0127] and Table 4), which is at least 12 percentage points greater and would provide tallow amine ethoxylate as 100 wt% of a breaker in the emulsion.
Accordingly, Applicant may instead consider incorporating any other unexpected effects of using tallow amine ethoxylate in particular, as drawn from the Example data ([0145]-[0168] and Figs. 1-4).
Nevertheless, Applicant is advised to beware the inclusion of New Matter.
As always, Applicant may consider contacting the Examiner for an Interview or the like, in the case further explanation or guidance is desired.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674