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 without traverse of Group II, claims 8-14 in the reply filed on 05/05/2026 is acknowledged.
Claims 1-7 and 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
Specification
The disclosure is objected to because of the following informalities:
The disclosure recites: “This application is a continuation of U.S. Application Serial No. 17/944,082 filed on September 13, 2022, which is a continuation of U.S. Application Serial No. 15/407,137 filed on January 16, 2017” [0001]. However, the “U.S. Application Serial No. 17/944,082 filed on September 13, 2022” is now U.S. patent 12,116,551, issued on October 15, 2024, and the “U.S. Application Serial No. 15/407,137 filed on January 16, 2017” is now U.S. patent 11,441,103, issued on September 13, 2022. The applicant is reminded to update the continuity data of their invention. Correction is required.
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 8 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,642,743 to Ranes (hereinafter “Ranes”) in view of GB 2451170 to Seyd (hereinafter “Seyd”) and in further view of US 2,944,924 to Leif et al. (hereinafter “Leif”).
Regarding claims 8, 12 and 13, Ranes teaches a method for decontaminating a vessel or processing equipment used in chemical processing or oil refineries (column 2, line 66 to column 3, line 2) comprising the steps of providing a solvent composition comprising an amine oxide such as lauryl dimethyl amine (reads on “dimethyl dodecylamine”) (column 3, lines 3-20), wherein the amine oxide concentration is from about 30 to 2100 ppm (column 3, lines 5-20), injecting the solvent composition into the vessel (column 3, lines 54-58), and allowing the solvent to contact at least a portion of contaminants present in the vessel (column 4, lines 10-15), wherein the contaminants comprise hydrocarbons (column 4, line 12-15).
Ranes does not teach the step of vaporizing the amine oxide within a steam line to form the solvent composition, wherein the amine oxide gas a boiling that matches a boiling point of the steam, and injecting the solvent composition into the vessel in the steam line.
Seyd teaches a method for cleaning a vessel such as a separator used in the petroleum industry (page 1, lines 2-5), the method comprising the steps of supplying steam and a chemical (page 3, lines 30-31) comprising dimethyl dodecyl amine oxide (page 5, lines 2-4). Seyd further teaches that the steam and chemicals are supplying to the vessel to be cleaned from a steam manifold through supply lines (figure 1, #5’ and 7’) and control valves (figure 1, #15 and 17) (page 6, lines 12-24, and page 8, lines 1-11), wherein they may be supplied individually or in any desirable combination from the steam manifold to the vessel to be cleaned (page 4, lines 13-17).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method disclosed by Ranes with the step of injecting the solvent composition into the vessel in the steam line with a reasonable expectation of success, since Ranes teaches that utilizing the composition at elevated temperatures increases the effectiveness of the solution (col. 1, lines 27-30 of Ranes), and Seyd teaches that it is effective to clean a vessel such as a separator used in the petroleum industry with steam and a chemical (page 3, lines 30-31 of Seyd) comprising dimethyl dodecyl amine oxide (page 5, lines 2-4 of Seyd), and that the steam and chemicals are supplying to the vessel to be cleaned from a steam manifold (page 6, lines 12-24, and page 8, lines 1-11 of Seyd), wherein they may be supplied individually or in any desirable combination from the steam manifold to the vessel to be cleaned (page 4, lines 13-17 of Seyd).
Ranes/Seyd does not teach the step of vaporizing the amine oxide within the steam line to form the solvent composition, wherein the amine oxide has a boiling that matches a boiling point of the steam.
Leif teaches that it was known in the art to clean a tank used in the storing and transportation of use oils obtained from petroleum, vegetable and animals by injecting a solvent composition into the tank to be cleaned using a steam line, wherein the step of injecting the solvent composition into the tank comprises introducing the steam into the solvent composition to heat the solvent composition and vaporizing the solvent by the direct blowing steam, and introducing the vaporized solvent composition into the tank to be cleaned (column 1, lines 51-56).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method disclosed by Ranes/Seyd with the step of vaporizing the amine oxide within the steam line to form the solvent composition, wherein the amine oxide gas a boiling that matches a boiling point of the steam, with a reasonable expectation of success, for the purpose of completely vaporizing the solvent composition into the steam line, since Leif teaches that vaporizing a solvent composition using a steam line is effective for cleaning the interior surfaces of tanks and for cleaning tanks that require large quantities of solvents for cleaning (column 1, lines 51-56 and column 2, lines 50-61 of Leif).
Ranes/Seyd/Leif does not explicitly teach that the method is a method for decontaminating a vessel during a refinement process of crude oil and natural gas.
However, it would have been obvious to one of ordinary kill in the art before the effective filing date of the claimed invention to perform the method disclosed by Ranes/Seyd/Leif for decontaminating a vessel during a refinement process of crude oil and natural gas, with a reasonable expectation of success, since Ranes teaches a method effective for decontaminating a vessel or processing equipment used in chemical processing or oil refineries (col. 2, line 66 to col.3, line 2 of Ranes), Seyd teaches a method for cleaning a vessel such as a separator used in the petroleum industry (page 1, lines 2-5 of Seyd), and Leif teaches a method for cleaning tanks used in the storing and transportation of use oils obtained from petroleum, vegetable and animals (column 1, lines 15-24 and 51-56 of Leif).
Regarding claim 14, Ranes/Seyd/Leif further teaches that the composition comprises enzymes in an amount of 1 to 200ppm, wherein the enzymes selected from the group consisting of protease, amylases, lipases, cellulases, and mixtures thereof (column 3, lines 3-10 of Ranes).
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,642,743 to Ranes (hereinafter “Ranes”) in view of GB 2451170 to Seyd (hereinafter “Seyd”) and US 2,944,924 to Leif et al. (hereinafter “Leif”), and in further view of US 8,617,317 to Levitt (hereinafter “Levitt”).
Regarding claims 9 and 10, Ranes/Seyd/Leif does not teach that the composition comprises an anti-foaming, wherein the anti-foaming comprises polydimethylsiloxane.
However, the use of polydimethylsiloxane in a cleaning composition was known in the art. For example, Levitt teaches a solvent cleaning composition comprising amine oxides (column 8, lines 46-52) and polydimethylsiloxane as a deforming agent (column 11, lines 39-49) for cleaning hard surfaces (column 4, lines 7-11) and for cleaning grease, oil, adhesive, asphalt, labels and/or stains from hard surfaces (column15, lines 54-56).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method disclosed by Ranes/Seyd/Leif wherein the composition comprises an anti-foaming such as polydimethylsiloxane, with a reasonable expectation of success, because Ranes teaches the desire to avoid foaming the cleaning composition since the cleaning composition includes a major concentration of surfactants which promotes foaming (column 5, lines 58-63 or Ranes) and that when the temperature of the composition approaches the boiling point foaming can occur (column 1, lines 30-36 of Ranes), and Levitt teaches that a solvent composition comprising amine oxides (column 8, lines 46-52 of Levitt) and polydimethylsiloxane as a deforming agent (column 11, lines 39-49 of Levitt) is effective for cleaning hard surfaces (column 4, lines 7-11 of Levitt) and for cleaning grease, oil, adhesive, asphalt, labels and/or stains from hard surfaces (column 15, lines 54-56 of Levitt).
Regarding claim 11, Ranes/Seyd/Leif/Levitt does not teach that the polydimethylsiloxane is present in an amount of about 1 ppm to about 100 ppm.
However, the amount of polydimethylsiloxane present in the composition is a result effective variable modifying the cleaning results. For example, if the amount of polydimethylsiloxane present in the composition is too low, it risks excessive foaming of the composition, while if the amount of polydimethylsiloxane present in the composition is too high, it wastes the polydimethylsiloxane. Without evidence of unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the appropriate amount of polydimethylsiloxane present in the composition with predictable results, 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 involves only routine skill in the art. Consult MPEP 2144.05II.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 8-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,441,103 to Matza (hereinafter “US’103”) in view of US 5,642,743 to Ranes (hereinafter “US’743”).
Although the claims at issue are not identical, they are not patentably distinct from each other because US’103 claims a similar method of decontaminating a vessel during a refinement process of crude oil and natural gas, the method comprising providing a solvent composition comprising an amine oxide, and polydimethylsiloxane in an amount of about 1 ppm to 100 ppm, injecting the solvent composition into the vessel using a steam line comprising steam, and wherein the step of introducing the solvent composition into the vessel comprises a liquid boilout, allowing the solvent composition to contact at least a portion of contaminants present in the vessel, wherein the contaminants comprise a hydrocarbon, hydrogen sulfide, a metal sulfide, or combinations thereof.
Claims 1-4 do not teach that the one or more amine oxides comprises N,N dimethyl decylamine, N,N dimethyl dodecylamine, N,N, dimethyl tetradecylamine, N,N dimethyl hexadecylamine, N,N dimethyl octadecylamine, or a combination thereof, wherein the one or more amine oxides are present in an amount of about 30 ppm to about 2,100 ppm.
US’743 teaches a method for decontaminating a vessel or processing equipment used in chemical processing or oil refineries (col. 2, line 66 to col.3, line 2) comprising the steps of providing a solvent composition comprising an amine oxide such as lauryl dimethyl amine oxide (reads on “dimethyl dodecylamine”) and enzyme (col. 3, lines 3-20), wherein the amine oxide concentration is from about 30 to 2100 ppm (col. 3, lines 5-20), injecting the solvent composition into the vessel (col.3, lines 54-58), and allowing the solvent to contact at least a portion of contaminants present in the vessel (col.4, lines 10-15), wherein the contaminants comprise hydrocarbons (col.4, line 12-15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teaches of US’743 to use dimethyl dodecylamine in an amount of about 30 ppm to about 2,100 ppm, with a reasonable expectation of success, since US’743 teaches that it is effective to use a composition comprising an amine oxide such as lauryl dimethyl amine oxide (dimethyl dodecylamine) in an amount of about 30 ppm to about 2,100 ppm for cleaning contaminants such as hydrocarbons from refinery vessels (col. 2, line 66 to col.3, line 2-20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARLYN I RIVERA-CORDERO whose telephone number is (571)270-7680. The examiner can normally be reached Monday to Friday, 9:00 AM to 2:00 PM.
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/A.I.R/Examiner, Art Unit 1714
/KAJ K OLSEN/Supervisory Patent Examiner, Art Unit 1714
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