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 .
Drawings
The drawings were received on 12/18/25. These drawings are accepted.
Claim Objections
Claim 12 is objected to because of the following informalities: Claim 12 recites “wherein the concentration of polymer has in a range of about 10% to about 30%.” The italicized phrase is cumbersome; it appears “has” should be replaced with -is-. 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 1-7, along with new dependent claims 10-12, 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.
In the Specification, Applicant discloses existing and available gelled fluids that act as a gas-liquid spacer, including xanthan gum or guar gum, which are injected as a gel after crosslinking, or mono-ethylene glycol in gel form, wherein large volumes thereof are required to have a PIG effect since they are liquid gels, further noted as fluid. Known alternatives thereto are disclosed to include solid rubber products which are stable at high temperatures, as well as products available from Halliburton which are collectively known under the trademark SureGLTM. Applicant describes SureGLTM products as acting as a plug.
Applicant proceeds to attempt to differentiate the instant spacers as operating as a plug by being liquid at high temperature and a “solid” “gel” at low temperature in [0049]. Further description of such at low temperature conditions follows in [0061], where the instant spacer is defined as a gel/solid product, as well as in [0080] and [00103], with respect to a crystal gel embodiment, wherein such is either a “soft” gel or a “hard” gel, based on the active matter content therein, and [00102] wherein in an alternative embodiment, the spacer is a liquid at high temperatures and forms a gel/plug at low temperatures.
Applicant appears to suggest the “solid” gels may be soft or hard and/or a gel/plug, but fails to further define such in a way that defines properties associated therewith and/or what is indeed considered to distinguish between a gel that exhibits fluidity, i.e., the alleged properties of those of the Prior Art, from a “solid” gel that is “soft,” “hard,” or a plug. For example, liquids can indeed form a “plug,” as is evidenced by the data sheet for SureGLTMT (provided with previous Office Action), wherein such is described as becoming a highly complexed gel which can be used to isolate and resist flow while serving as a temporary barrier system, i.e., a plug. Would such be considered a “soft” or “hard” gel? Since SureGLTMT therefore appears to indeed provide a gel plug, without, for example, having defined values of viscosity and/or, for example, an elastic modulus, etc., associated with Applicant’s inventive “solid” gel, the specification does not clearly enable one of ordinary skill in the art to make and/or use a spacer that is a “solid gel” distinguishable from a plug/gel of the prior art, and, therefore, a “solid gel” commensurate in scope with the instant claims.
The Examiner notes, Applicant does not define the materials and amounts thereof used in forming the gas liquid spacer, and, therefore, does not enable one of ordinary skill in the art to provide for a gas-liquid spacer as claimed. For example, Applicant acknowledges wherein depending on the active matter content of polymer in a crystal gel, the product will have different consistencies which can be considered a soft gel or hard gel; the specification, however, does not distinguish what properties are associated therewith and/or used to distinguish a soft gel from a hard gel, or from what are Prior Art gels used for such purposes, nor does the specification define and/or provide an example of a specific polymer used therefor, particularly with regard to the material formulated as a mixture of polymer, paraffin and mineral oil. As such, Applicant does not actually provide sufficient direction or description of how to make a spacer capable of forming a “solid gel” product and/or what indeed itself is even considered a solid gel product.
Per In re Wands, 858 F.2d 731,737, 8 USPQ2d 1400, 1404 (Fed. Gir. 1988), the current claims meet the following Undue Experimentation factors:
(C) The state of the prior art - because the use of spacers that increase in viscosity so as to form a temporary barrier system appear known in the Prior Art (Sure GLTMT).
However, the current claims fail to meet the following Undue Experimentation factors:
(A) The breadth of the claims - because the current claims encompass the provision of a material that is a “solid gel” at temperatures of 4oC, without defining what is indeed required for a material to be a “solid gel,” what specific materials and/or amounts thereof which can be used to form said “solid gel.” For example, with respect to the material as formulated from i., “a polymer” is disclosed as used therein; however, no specific example of a polymer and/or genus of polymers is disclosed or recited in the specification as filed as used therefor. Thus, the breadth of the claims is extensive.
(B) The nature of the invention - because the current Invention contemplates providing a “solid gel” at low temperatures without even defining what indeed is a “solid gel.” The specification rather recites “solid (gel)” throughout the disclosure of the invention while defining gels as semi-solid within the background of the disclosure.
(D) The level of one of ordinary skill - because one of ordinary skill in the art would be uncertain as to what the end result, i.e., “solid gel,” is that they are to attain when attempting to create the gas-liquid spacer absent any specifics of any particular properties associated therewith and/or starting materials used therefor; for example, when describing the crystal gel in [0080], Applicant states such is a mixture of polymer, paraffin and solvent, without suggesting any particular polymer used therefor and/or any particular solvent. Without knowing what the intended result of mixing said components is, i.e., what is necessary for such to be considered a “solid gel,” i.e., is such a solid semi-solid? A soft gel? A hard gel? All such definitions further add to the ambiguity of Applicant’s intended result, one of ordinary skill is given no direction for what type of polymer and/or solvent to use and/or amounts thereof, and, therefore, would not be capable of producing a “solid gel” as claimed when there is no direction as to what a “solid gel” even is.
(E) The level of predictability in the art - because, although in theory a “solid gel” may be attainable, it is difficult to predict if any and all potential polymers, as encompassed by i., can be used to create such absent specifically disclosing what is used in creating such and/or what specific properties and/or aspects Applicant deems associated therewith. Furthermore, without any particular properties disclosed as associated with the “solid” gel, i.e., viscosity, hardness, etc., it is difficult to predict what end result is even intended and thus what such mixtures are even expected to achieve.
(F) The amount of direction provided by the inventor - because Applicant does not actually describe a protocol for producing such solid gels, what polymers are used therefor, and what is necessary for such to be deemed a “solid gel,” i.e., such as properties associated therewith.
(G) The existence of working examples - because Applicant merely describes a high level genus of materials included in the spacer, for example, the crystal spacer, i.e., any polymer and/or any solvent, without suggesting any examples thereof that may be used (see [0081]).
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure - because it is not clear what polymers and/or solvents are intended to be used to form such “solid gels” with regard to the crystal gel embodiment as no polymer is recited in the specification with respect thereto; with regard to the hydrogel embodiment, Applicant merely describes wherein ratios between active substances and solvent content can be adjusted to form a gel/plug at low temperatures, as per [0077]. Is such a gel/plug synonymous with a “solid gel,” and, if so, what is necessary for such? The quantity of experimentation is potentially infinite.
That is, the current claims meet 1 of the Wands factors, while failing to meet the remaining 7 factors, two of which relate to the claim scope (A and H).
More fundamentally, the Office recognizes that Applicant has not demonstrated a single spacer product that demonstrates the desired ability to form a “solid gel.”
For examination purposes, the claims will be treated on their merits.
Claims 1-7 and new claims 10-12 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 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.
Independent claim 1 has been amended to recite “the material forms a solid gel at temperatures of 4°C.” Such is not disclosed in the specification as filed; Applicant rather describes wherein tests in Table 3 were obtained at a temperature of 4°C in [0084] of the specification as filed. [00102] further notes wherein dependent upon the formulation of CAT TINA/the hydrogel embodiment, the product can form a gel/plug at 4°C, but the specification fails to positively identify and/or define such as a “solid gel.” There is no other reference to wherein the alternative material components, i.e., polymer/paraffin/mineral oil mixture form a “solid gel” and/or the temperature associated therewith. As such, Applicant has not sufficiently described the subject matter with reference to 4°C as claimed, and as such, the newly added limitations of such constitute new matter.
Independent claim 1 has been amended to require the spacer comprise a material soluble in oil at 80°C or a liquid at 60°C, as well as wherein the material is formulated from a mixture of polymer, paraffin and mineral oil or a hydrogel prepared with polymer that is configured to form a 3D structure of crosslinks. Within the specification as filed, Applicant describes the former material as CAT CRIS and the latter as CAT TINA. CAT TINA is described as a liquid at temperatures from 60°C in [00102] while in [00103] describing the CAT CRIS alternative as oil-soluble. CAT TINA is never described in the specification as oil soluble at 80°C, and as such, it would appear an alternative claimed, i.e., a material soluble in oil and formulated from a hydrogel is thus not described in the specification as filed. As such, Applicant’s amendments constitute new matter.
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 1-7 and new dependent claims 10-12 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. Furthermore, the claims elected are drawn to a product, but it is of note, many limitations appear to suggest an intended use or application of the product, for example, using phrases such as “is injected” and “applying the spacer.” Revision to the claims to define the product by what the product is as opposed to what the product does is advised.
Independent claim 1 recites “a material soluble in oil at 80°C or a liquid at 60°C.” It is unclear if Applicant is intending to claim the material i., soluble in a) oil at 80°C or b) liquid at 60°C, OR ii., a) is soluble in oil at 80°C or b) is a liquid at 60°C. Clarification is required.
The term “solid gel” in claim 1 is a relative term which renders the claim indefinite. The term “solid gel” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The phrase “solid gel” is unclear as it is unclear as to how something can be referred to as both a solid and a gel. A gel, by dictionary definition, encompasses thick substances, as well as semi-rigid substances while a solid is defined as firm and stable in shape, not liquid or fluid. It is unclear as to what is required for something to be a “solid gel;” moreover, Applicant has not defined and/or described any properties associated therewith. The instant specification appears to define such as a gel/plug, and, therefore, for the purpose of examination, a material that forms a gel/plug will be considered to be a “solid gel” as instantly claimed.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The phrase “solid gel” in claim 1 is used by the claim to mean “gel/plug,” while the accepted meaning of a gel encompasses thick substances, as well as semi-rigid substances while a solid is defined as firm and stable in shape, not liquid or fluid. The phrase is indefinite because the specification does not clearly redefine the term.
New dependent claim 11 recites “further comprising a glycerin content in a range of about 70% to about 80%.” Claim 5, upon which claim 11 depends, recites “further comprising different contents of glycerin and monoethylene glycol (MEG) in a range of about 60% to about 90%.” The use of “further comprising” in claim 11 is unclear as it would appear to suggest such in addition to the limitations already required by claim 5. Claim 5 appears to suggest the total MEG and glycerin is 60-90%; is Applicant requiring in claim 11 that the glycerin content of such a mixture is 70-80%? Or is the overall glycerin content of the hydrogel 70-80%? Is MEG intended to be included therewith? Clarification is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4, along with claims 5, 10 and 11, dependent therefrom, is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 recites “wherein the material is formulated from a hydrogel, and wherein depending on the formulation of the material, the material comprises a liquid.” Independent claim 1, however, upon which claim 4 depends, requires “a liquid at 60oC.” Therefore, it appears Applicant’s recitation of “depending on the formulation of the material” attempts to broaden that which already is required in independent claim 1, and, therefore, fails to further limit the independent claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 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, 6, 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Prodida et al. (US 2014/0230946 – cited previously).
With respect to independent claim 1, Prodida et al. discloses a gas-liquid spacer for removal of liquid from subsea lines, the spacer comprising:
a material that is a liquid at 60oC, the material being formulated from i.) a mixture of polymer, paraffin and mineral oil ([0103]-[0105]).
Prodida et al. discloses wherein the spacer comprises a phase changing material that provides for a phase change from gel or liquid to more crystalline, i.e., solid, wherein such a change is brough about by increased pressure and/or decreased exterior temperature and/or increased interior temperatures, wherein examples of such materials include polymers, certain mineral oils and paraffin ([0103]-[0105]). Paraffin is disclosed as the phase changing material ([0104]), thereby providing for a material that is a liquid as claimed. The reference additionally suggests wherein the material may further include non-compressible materials with examples thereof including polymers and mineral oils ([0105]). As such, it would have been obvious to one having ordinary skill in the art to try a mixture of polymer, paraffin and mineral oil, as instantly claimed in order to provide a material with improved thermal insulation and/or bulk modulus ([0103]), as well as lower density and higher bulk modulus when encompassed within a confined space ([0105]). The Examiner notes, it has been held, “Though picked from a laundry list a prima facie case of obviousness exists over the claimed combination. See Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985) where it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious." One skilled in the art would therefore be motivated to select the Applicant's claimed combination of well known materials from those disclosed by Prodida et al..
With regard to Applicant further limitations pertaining to “with an adjustable diameter in the range of from 6” to 2” in order to pass through a Wet Christmas Tree (WCT) and disintegrate after passing through the WCT, and during operation, the spacer operates as a plug to prevent passage of natural gas to liquid in subsea line when at a temperature of 4oC so as to prevent formation of gas hydrates, even with increased pressure in a subsea line, so as to operate in subsea lines with different diameters, and so as to be able to pass through subsea lines with diameter restrictions and reductions, such recitations are merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. Regardless of any mention of the intended use or purpose of the product, claims to an intended use have no patentable weight, as it has been taught “[T]he grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition…. As a matter of claim drafting, therefore, the discoverer of a new use must protect his discovery by means of process or method claims and not product claims.” In re Hack (CCPA 1957).
Further MPEP 2115 states material or article worked upon does not limit the apparatus claims. A claim is only limited by positively recited elements. Thus, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). It is noted claim 1 is directed to a product which works upon an article or material in its intended use. However, with respect to the product as claimed, the process is irrelevant in terms of determining patentability of the particular product. Therefore, the inclusion of the material or article worked upon by a product being claimed does not impart patentability to the claims. The manner or method in which such product is to be utilized is not germane to the issue of patentability of the product itself.
With respect to dependent claim 2, 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. Furthermore, regardless of any mention of the intended use or purpose of the product, claims to an intended use have no patentable weight, as it has been taught “[T]he grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition…. As a matter of claim drafting, therefore, the discoverer of a new use must protect his discovery by means of process or method claims and not product claims.” In re Hack (CCPA 1957).
With respect to dependent claim 3, Prodida et al. discloses wherein the material is formulated from a mixture of polymer, paraffin and mineral oil, as set forth above in the rejection of claim 1. Although silent to wherein such is soluble in oil at 80oC as clamed, since Prodida et al. suggests the same composition as claimed, the solubility thereof would be expected to act in the same manner as claimed, i.e., be soluble in oil at 80oC. If there is any difference between the solubility of the material of Prodida et al. and that of the instant claims, the difference would have been minor and obvious insofar as because “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(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).
With respect to further dependent claim 6, it would have been an obvious matter of choice and design to one having ordinary skill in the art to manufacture the gas-liquid spacer to be adjusted according to application so as to ensure the cohesive structure thereof is capable of use in each of the application for which it is suggested to be intended.
With respect to dependent claim 7, 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. In the instant case, the material of Prodida et al. is deemed capable of performing the intended use. Furthermore, regardless of any mention of the intended use or purpose of the product, claims to an intended use have no patentable weight, as it has been taught “[T]he grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition…. As a matter of claim drafting, therefore, the discoverer of a new use must protect his discovery by means of process or method claims and not product claims.” In re Hack (CCPA 1957).
With respect to dependent claim 12, Prodida et al. discloses wherein the spacer includes polymers, and, further, wherein such is included to impart lower resistance against wear and weather, while also exhibiting lower density and high bulk modulus ([0105]). The reference, however, fails to disclose the amount of polymer included in the material. It would have been obvious to one having ordinary skill in the art to include a concentration of polymer within the range as claimed in order to impart a desired resistance against wear and weather, as well as lower density and desired bulk modulus since it has been held "[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 concentration range for the polymer as critical and it is unclear if any unexpected results are achieved by providing for such. Since the amount of polymer of Prodida et al. is provided in an amount to impart lower resistance to wear and weather, while Applicant’s amount of polymer provides for a varied consistency so that the gel/plug has desired properties at low temperature ([0080] of the specification as filed, it does not appear that such would be considered an unexpected result of using the presently claimed concentration range of polymer, and, as such, the determination of optimal concentration thereof would be achievable through routine experimentation in the art.
Claims 1, 4, 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Meher et al. (US 2018/0362840).
With respect to independent claim 1, Meher et al. discloses a gas-liquid spacer for removal of liquid from subsea lines, the spacer comprising:
a material that is a liquid at 60oC, the material formulated from a hydrogel prepared with polymers that is configured from a three-dimensional structure of cross-links absorbent of water ([0011]), the polymers selected from the group consisting of pectin, carrageenan, and gelatin ([0014]), the material also forms a solid gel ([0010], wherein the hydrogel is included in a liquid during placement and swells to form a barrier, i.e., solid).
With regard to Applicant further limitations pertaining to “with an adjustable diameter in the range of from 6” to 2” in order to pass through a Wet Christmas Tree (WCT) and disintegrate after passing through the WCT, and during operation, the spacer operates as a plug to prevent passage of natural gas to liquid in subsea line when at a temperature of 4oC so as to prevent formation of gas hydrates, even with increased pressure in a subsea line, so as to operate in subsea lines with different diameters, and so as to be able to pass through subsea lines with diameter restrictions and reductions, such recitations are merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. Regardless of any mention of the intended use or purpose of the product, claims to an intended use have no patentable weight, as it has been taught “[T]he grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition…. As a matter of claim drafting, therefore, the discoverer of a new use must protect his discovery by means of process or method claims and not product claims.” In re Hack (CCPA 1957).
Further MPEP 2115 states material or article worked upon does not limit the apparatus claims. A claim is only limited by positively recited elements. Thus, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). It is noted claim 1 is directed to a product which works upon an article or material in its intended use. However, with respect to the product as claimed, the process is irrelevant in terms of determining patentability of the particular product. Therefore, the inclusion of the material or article worked upon by a product being claimed does not impart patentability to the claims. The manner or method in which such product is to be utilized is not germane to the issue of patentability of the product itself.
With respect to dependent claim 2, 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. Furthermore, regardless of any mention of the intended use or purpose of the product, claims to an intended use have no patentable weight, as it has been taught “[T]he grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition…. As a matter of claim drafting, therefore, the discoverer of a new use must protect his discovery by means of process or method claims and not product claims.” In re Hack (CCPA 1957).
With respect to dependent claim 4, Meher et al. discloses wherein the spacer has the following characteristics: wherein the material is formulated as a hydrogel ([0014]), and wherein depending on the formulation of the material, the material comprises a liquid at 60oC ([0010]).
With respect to dependent claim 7, 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. In the instant case, the material of Meher et al. is deemed capable of performing the intended use. Furthermore, regardless of any mention of the intended use or purpose of the product, claims to an intended use have no patentable weight, as it has been taught “[T]he grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition…. As a matter of claim drafting, therefore, the discoverer of a new use must protect his discovery by means of process or method claims and not product claims.” In re Hack (CCPA 1957).
With respect to dependent claim 10, Meher et al. discloses the gas-liquid spacer configured as different geometric shapes ([0011]). The reference further suggests wherein the hydrogel average particle size is in the range of 5-4000 microns ([0011]), and, further, wherein such can absorb 2000 times its weight ([0012]) while swelling to produce a barrier to fluid flow ([0034]). Although silent to such as having an adjustable diameter in the range as claimed, based on the initial size and swelling capabilities of the hydrogel disclosed by Meher et al., it is the position of the Office that one having ordinary skill in the art would recognize the optimal adjustable diameter to provide for therewith since it has been held "[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). 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."). One having ordinary skill in the art would recognize the optimal size and shape for the hydrogel of Meher et al. in order to effectively form a plug therewith.
Response to Arguments
Applicant’s arguments and amendments made with respect to the drawing objections, specification objections and claim objections, as set forth in the previous office action have been fully considered and are persuasive. The objections noted herein have been withdrawn.
Applicant’s arguments with respect to the 35 USC 112(a), first paragraph rejections have been fully considered, but they are not persuasive.
Applicant notes the claim amendments to claim 1 to include the components used for the materials, while claim 5 has been amended to clarify the ranges of amounts of components used and new claims 11 and 12 have been added to further provide amounts of components.
Regarding (A) and (B), Applicant asserts the skilled artisan would readily recognize and distinguish a “solid gel” in contrast to a “liquid gel.” Applicant asserts [0012] of the specification describes a liquid gel as a “fluid” and a skilled artisan would be able to distinguish a liquid gel material which is a gel that has fluid properties from a solid gel, which is a firmly gelled solid material.
The Examiner notes, Applicant has not defined a solid gel in the specification as such; furthermore, the specification does not describe a “firmly” gelled material and/or what properties are associated with a solid gel. Applicant rather states the material may be in the form of a solid (gel), thereby potentially equating a “gel” with a solid product (see specification as filed [0061] and [0072]). As such, is the material indeed a gel or solid? Gels are known to a skilled artisan to be associated with having a viscosity and/or fluid characteristics, while a solid does not. Furthermore, in the background, Applicant describes a gel as “semi-solid,” and, as such, it is unclear as to if Applicant thus intends the solid gel to be a solid semi-solid, and as to what such encompasses.
The Office acknowledges Applicant’s defining of the “low” temperature within the claims.
With regard to (D), Applicant asserts a skilled artisan would recognize a solid gel since a skilled artisan would recognize a liquid gel and a solid gel and be able to distinguish their characteristics.
The Office disagrees. Applicant merely states “solid (gel)” within the specification without describing any attributes and/or properties thereof.
With regard to (E), Applicant asserts the claims have been amended to clarify the components. However, although dependent claims may include percents of, for example, MEG and glycerin, with respect to the hydrogel material, and the polymer, with respect to the polymer/mineral oil/paraffin mixture, the Office maintains, Applicant has not defined a single polymer suitable for use as the polymer in the polymer/mineral oil/paraffin mixture embodiment, and/or an amount of pectin/carrageenan/gelatin included in the hydrogel, or whether the pectin/carrageenan/gelatin are used singularly and/or in a particular combination. As such, without knowing the final properties of the “solid gel,” the possible combinations and permutations of materials capable of use for either the material formulated from i. or ii. is overly extensive.
With regard to (F), Applicant asserts the preparation of materials is included in [0080]-[0081] and [0106] and a person of skill would recognize such as present to form a gel. The Office respectfully disagrees; Applicant appears to describes the product of [0080]-[0081] as a soft gel or hard gel, further adding to ambiguity of what indeed is a “solid” gel and [0106] further fails to clarify such.
With regard to (G), Applicant asserts the materials needed for the spacer are disclosed. Applicant asserts the hydrogel formulation comprises 60-90% glycerin or MEG and the polymers forming such are pectin, carrageenan or pectin.
The Examiner notes, Applicant merely recites pectin/carrageenan/gelatin without any conjunctions a singular time in the specification and as such, does not even clearly define if such are indeed present as alternatives or in any combination. Moreover, such is only pertinent to a material formulated as a hydrogel. The Office maintains no singular polymer has been disclosed with respect to the material formulated from i. as a mixture of polymer, paraffin and mineral oil.
With regard to (H), Applicant asserts a skilled artisan would readily recognize what a solid gel is and the specification readily provides formulations for the materials.
The Examiner respectfully disagrees. The specification rather recites “solid (gel)” throughout and provides no indication of whether the material is indeed solid or gel or, as instantly claimed a solid gel, which further is not defined as having any particular viscosity and/or properties used to define gels. Furthermore, no explicit formulation of the materials is suggested for either embodiment. For example, with regard to i., is a particular ratio of paraffin and mineral oil needed to provide for a “solid” gel? Is that ratio applicable to any and all polymers known to exist so as to provide for the claimed invention? With regard to ii., is a particular amount of pectin/carageenan/gelatin needed to create the hydrogel? The specification therefore does not readily provide for formulations and/or an end result of what a “solid” gel is and therefore is not enabled.
Applicant’s arguments with respect to the 35 USC 112, second paragraph, rejections with regard to the term “solid gel” have been fully considered, but they are not persuasive. Applicant asserts a person of skill would be reasonably apprised of the scope of the invention.
The Examiner respectfully disagrees and directs Applicant’s attention to HALLIBURTON ENERGY SERVICES INC v. M-I LLC (2008), wherein a “fragile gel” was claimed. Therein, the court reviewed the definition of a fragile gel in the specification and found that it was too subjective and unclear as it relied on terms such as “easily transitions,” “easily disrupted or thinned,” “less gel-like,” “more liquid-like,” “quickly returns to a gel,” “break instantaneously,” and “minimum pressure, force, and time.”
Similar to such, the instant specification discloses within the background in [0024] wherein “Fracturing fluids are liquid or gel (semi-solid)” as well as wherein the instant invention addresses the use of a solid spacer. The specification continues in [0027] providing wherein such differ from the prior art because they deal with fluids prepared at the time of injection and address liquid or gel (semi-solid) spacers, while the spacer of this disclosure, in addition to being solid, will be supplied ready. The objectives of the invention continue with describing the spacer as operating as a plug, which is defined as a solid gel at low temperatures in [0049]. The disclosure states in [0053] wherein the spacer again is a solid gel, and suggests characteristics including that such is a gel/solid product in low temperature conditions in [0061]. In [0072], Applicant again recites wherein the products are a solid (gel) at low temperatures. The specification indicates a crystal gel product, depending on the active matter can be considered “soft gel” or “hard gel” in [0080] and [00104]. As such, it appears within the background Applicant initially distinguishes a gel from a solid by stating a gel is a semi-solid while the instant spacers are solid. However, the specification then goes on to use the term “gel” with “solid” without providing any definition associated therewith. Is a “solid gel” therefore a semi-solid since a gel is defined as a semi-solid? Moreso, the examples indicate the gel can be “soft” or “hard,” thereby further not providing any definitive explanation as to what a “solid gel” indeed is. Is Applicant’s “solid gel” indeed a semi-solid and thus not solid at all? Thus, similar to the above noted HALLIBURTON case, the definition of a solid gel in the specification is found to be too subjective and unclear and the rejection is maintained.
Applicant’s arguments and amendments with respect to the rejections of claims as anticipated by and/or unpatentable over SureGLTMT have been fully considered; in view of Applicant’s amendments, the rejections made with respect thereto have been withdrawn. However, upon further consideration of the pending claim limitations, new grounds of rejection have been presented, as set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
01/27/26