DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/13/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 11 recites a Markush group from which the solvent is selected. Several elements recited therein repeat those of the Markush group of independent claim 1, including a formate, naptha, kerosene, diesel, toluene, ethylenebenzene and xylene, while further elements not recited in the Markush group of claim 1 are provided, including methyl ether ethylene glycol, diethylene glycol monobutyl ether and dipropylene glycol butyl ether. The Examiner notes, the glycol ethers recited in dependent claim 11 appear to attempt to broaden the Markush group of solvents of claim 1 in that Applicant only recites “a glycol” therein and does not provide for a glycol ether. A glycol and a glycol ether are separate compounds, and it is unclear if Applicant is intending the glycol ethers of claim 11 to be a glycol or if Applicant is attempting to broaden the group of solvents of claim 1 by reciting a glycol ether in claim 11. Clarification is required.
Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 24 recites a Markush group from which the solvent is selected. Several elements recited therein repeat those of the Markush group of independent claim 1, including a formate, butyoxyethanol, naptha, kerosene, diesel, toluene, ethylenebenzene and xylene, while further elements not recited in the Markush group of claim 1 are provided, including diethylene. It is unclear if Applicant is attempting to broaden the group of solvents of claim 1 by reciting diethylene or, if such was intended to be written as, for example, diethylene glycol should such be supported by the specification. Clarification is required.
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 1-8, 13-19, 21, 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Saboowala et al. (US 10,053,619 – cited previously).
With respect to independent claim 1, Saboowala et al. discloses a method of recovering a fluid from a subterranean formation (abstract, wherein the fluid is used for water removal operations; col. 9, l. 59-61, wherein oil is recovered), comprising:
adding a composition to the fluid in the subterranean formation (col. 10, l. 32-35, wherein the composition is added as a preflush),
foaming the fluid in the subterranean formation (col. 10, l. 51-53, wherein the foam is generated from the emulsion/microemulsion after injection into a wellbore, and, thus, in the subterranean formation as claimed), and
recovering the fluid from the subterranean formation (col. 9, l. 25-27; col. 9, l. 61-65), wherein the composition comprises a compound of Formula I (col. 4, l. 39-col 5, l. 55); and
a solvent, wherein the solvent is selected from the group consisting of a formate, an alcohol, a glycol, naphtha, kerosene, diesel, toluene, ethylenebenzene and xylene (col. 4, l. 17, wherein a co-solvent, i.e., a type of solvent, thereby providing for “a” solvent, is disclosed; col. 4, l. 28-32, wherein at least an alcohol and a glycol are disclosed).
Saboowala et al. discloses wherein the composition comprises alkoxylated siloxane surfactants capable of stabilizing a foam in the presence of crude oil (col. 10, l. 5-13). The reference further suggests potential formulas thereof, wherein it is noted the siloxane surfactants comprise a plurality of ethylene oxide and/or propylene oxide groups, with an example thereof given as when the surfactant is an AB-type copolymer (col. 5, l. 35-41). Alternative structures and components thereof are suggested to include an organic group R corresponding to that which is currently claimed by the structure extending from the second Si of instant Formula I when instant R1 and R2 are H. Given the MDTQ notation for the building block units in Table 1 of Saboowala et al., along with the suggested non-limiting structures for the siloxane surfactant in Table 2 (col. 4, l. 39-col 5, l. 55), wherein it is further disclosed such surfactants are capable of stabilizing a foam in the presence of crude oil (col. 10, l. 10-13) it is the position of the Office that one having ordinary skill in the art would recognize an alkoxylated siloxane surfactant from the disclosure of Saboowala et al. that corresponds to Formula I as instantly claimed from the finite number of acceptable components for MDTQ disclosed therein in order to yield the predictable result of providing a foam stabilizing surfactant therewith. Saboowala et al. explicitly discloses the surfactant as comprising an alkoxylated siloxane surfactant that can comprise a plurality of propylene oxide groups; the reference further explicitly identifies components of the surfactant corresponding to the components instantly claimed as included in instant Formula I and identifies exemplary formulas that include copolymer forms thereof. Given the finite number of identified, predictable solutions, i.e., components in Table 1 of Saboowala et al., used in forming the foam stabilizing surfactant, a person of ordinary skill in the art would recognize the instantly claimed formula, i.e., Formula I, as a copolymer obtainable therefrom since it has been held "when there is motivation to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR, 550 U.S. at 402-03, 82 USPQ2d at 1390.
With respect to dependent claim 2, Saboowala et al. discloses injecting a gas into the subterranean formation (col. 10, l. 21-42).
With respect to dependent claim 3, Saboowala et al. discloses wherein the fluid comprises a hydrocarbon, water, or a combination thereof (abstract, wherein the fluid is used for water removal operations; col. 9, l. 59-61, wherein oil is recovered).
With respect to dependent claim 4, Saboowala et al. discloses wherein the hydrocarbon comprises crude oil and/or natural gas (col. 10, l. 10-13; col. 10, l. 59-63).
With respect to dependent claim 5, Saboowala et al. discloses wherein the fluid comprises an aqueous phase and crude oil phase (col. 10, l. 59-63). Although silent to the percent of crude oil, given the absence of evidence of the criticality thereof, as exemplified by the extensiveness of the instantly claimed range, it would have been obvious to one having ordinary skill in the art to provide for wherein the fluid comprises such an amount of crude oil in order effectively remove water from the formation therewith in water removal and/or effectively produce crude oil from the formation since the alkoxylated siloxane surfactants of Saboowala et al. are disclosed as capable of stabilizing foams in the presence of crude oil and thus one of ordinary skill would recognize the optimal amount of crude oil that is compatible 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).
With respect to dependent claim 6, Saboowala et al. discloses the methods as conducted in the recovery of crude oil from oil bearing earth formations (col. 9, l. 50-col. 10, l. 13). The reference, however, does not specify the API thereof. Since Saboowala et al. does not identify the crude as a heavy crude oil, but rather, crude oil in general, and since it is known wherein it is the heavy and extra heavy crude oils that have API gravities below 20 (see evidence in Conclusion of prior office action), it is the position of the Office that one having ordinary skill in the art would recognize the method of Saboowala et al. as suitable in crude oils having an API gravity within the range as claimed, since the methods of recovery suggested by Saboowala et al. are not methods disclosed to be exclusive to such heavy oils outside of the claimed range, and, thus, one having ordinary skill in the art would recognize the optimal API crude oil gravity in which to employ the methods of Saboowala et al. in order to effectively enhance oil recovery thereof 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).
With respect to dependent claim 7, Saboowala et al. discloses wherein the water can include brine (col. 10, l. 62-63). Although silent to the amount of total dissolved solids therein, given the extensiveness of the instantly claimed range and the fact that brine indeed would include total dissolved solids therein, it is the position of the Office that the provision for a TDS within the range as claimed would have been obvious to one having ordinary skill in the art 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).
With respect to dependent claim 8, Saboowala et al. suggests the composition comprising the same compound as instantly claimed (see explanation above within the rejection of claim 1). Although silent to the composition as oil-soluble, since Saboowala et al. discloses the same components in the composition as instantly claimed and disclosed by Applicant, the composition of Saboowala et al. would be expected to act in the manner as claimed, i.e., be oil-soluble. If there is any difference between the solubility properties with respect to oil of the composition of Saboowala 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 dependent claim 13, Saboowala et al. discloses wherein the composition comprises an additional component selected from the group as claimed (col. 4, l. 9-12, wherein components are selected so as to reduce or eliminate the hazards of the microemulsion to the environment/subterranean reservoirs, thereby providing for a “synergistic” compound therein; col. 10, l. 64- col. 11, l. 3, wherein a “synergistic” compound is included in the composition since the combination of components improves performance, as per col. 12, l. 51-59).
With respect to dependent claim 14, Saboowala et al. discloses wherein the additional component is present in an amount as claimed (col. 6, l. 59-62, wherein the amount of additional surfactant/“synergistic” component overlaps the range as claimed).
With respect to dependent claim 15, Saboowala et al. discloses wherein the composition comprises the compound in an amount as claimed (col. 4, l. 15-16).
With respect to dependent claim 16, Saboowala et al. suggests the composition as comprising the same compound as instantly claimed and disclosed by Applicant for at least the reasons noted above in claim 1. Although silent to the pour point of the composition, since the reference suggests a composition comprising the same compound, and, further, provides overlapping weight percents thereof in the composition as instantly claimed by Applicant, i.e., 1-100wt% as per claim 15, the pour point of the composition would be expected to fall within the range as claimed. If there is any difference between the pour point of the composition of Saboowala 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 dependent claim 17, Saboowala et al. discloses continuously or intermittently adding the composition to the fluid (col. 10, l. 32-35, wherein the composition is added as a preflush and thus intermittently).
With respect to dependent claim 18, Saboowala et al. discloses wherein the composition is added as claimed (col. 9, l. 16-32).
With respect to dependent claim 19, Saboowala et al. discloses wherein the compound is added in an amount between 10-70 wt% (col. 4, l. 13-17). The reference further suggests wherein such is added in a manner that provides for a foam capable of being stabilized in the presence of crude oil (col. 10, l. 10-13; col. 10, l. 59-63). Although silent to the amount thereof in ppm, given the absence of evidence of the criticality thereof, as exemplified by the extensiveness of the instantly claimed range, it is the position of the Office that one having ordinary skill in the art would recognize an optimal amount of the compound to employ in order to provide a foam capable of remaining stabilized in the presence of crude oil therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). 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 amount of compound as critical and it is unclear if any unexpected results are achieved by providing for such. Since the surfactant of Saboowala et al. is suggested as providing a stabilized foam in the presence of crude oil, as is instantly disclosed by Applicant, it does not appear that such would be considered an unexpected result of using the presently claimed amount thereof, and, as such, the determination of optimal amount of compound in ppm would be achievable through routine experimentation in the art in order to attain a stabilized foam in the presence of crude oil therewith.
With respect to dependent claim 21, Saboowala et al. discloses wherein the water can include brine (col. 10, l. 62-63). Although silent to the amount of total dissolved solids therein, given the extensiveness of the instantly claimed range and the fact that brine indeed would include total dissolved solids therein, it is the position of the Office that the provision for a TDS within the range as claimed would have been obvious to one having ordinary skill in the art 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). 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 TDS range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the foam formed by the composition of Saboowala et al. is suggested as being stable and enhances the production of hydrocarbons as is claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of using the presently claimed TDS range, and, as such, the determination of optimal TDS of the brine to employ would be achievable through routine experimentation in the art.
With respect to new independent claim 25, Saboowala et al. discloses a method of recovering a fluid from a subterranean formation (abstract, wherein the fluid is used for water removal operations; col. 9, l. 59-61, wherein oil is recovered), comprising:
adding a composition to the fluid in the subterranean formation (col. 10, l. 32-35, wherein the composition is added as a preflush),
foaming the fluid in the subterranean formation (col. 10, l. 51-53, wherein the foam is generated from the emulsion/microemulsion after injection into a wellbore, and, thus, in the subterranean formation as claimed), and
recovering the fluid from the subterranean formation (col. 9, l. 25-27; col. 9, l. 61-65), wherein the composition comprises a compound of Formula I (col. 4, l. 39-col 5, l. 55); and
Saboowala et al. discloses wherein the composition comprises alkoxylated siloxane surfactants capable of stabilizing a foam in the presence of crude oil (col. 10, l. 5-13). The reference further suggests potential formulas thereof, wherein it is noted the siloxane surfactants comprise a plurality of ethylene oxide and/or propylene oxide groups, with an example thereof given as when the surfactant is an AB-type copolymer (col. 5, l. 35-41). Alternative structures and components thereof are suggested to include an organic group R corresponding to that which is currently claimed by the structure extending from the second Si of instant Formula I when instant R1 and R2 are H. Given the MDTQ notation for the building block units in Table 1 of Saboowala et al., along with the suggested non-limiting structures for the siloxane surfactant in Table 2 (col. 4, l. 39-col 5, l. 55), wherein it is further disclosed such surfactants are capable of stabilizing a foam in the presence of crude oil (col. 10, l. 10-13) it is the position of the Office that one having ordinary skill in the art would recognize an alkoxylated siloxane surfactant from the disclosure of Saboowala et al. that corresponds to Formula I as instantly claimed from the finite number of acceptable components for MDTQ disclosed therein in order to yield the predictable result of providing a foam stabilizing surfactant therewith. Saboowala et al. explicitly discloses the surfactant as comprising an alkoxylated siloxane surfactant that can comprise a plurality of propylene oxide groups; the reference further explicitly identifies components of the surfactant corresponding to the components instantly claimed as included in instant Formula I and identifies exemplary formulas that include copolymer forms thereof. Given the finite number of identified, predictable solutions, i.e., components in Table 1 of Saboowala et al., used in forming the foam stabilizing surfactant, a person of ordinary skill in the art would recognize the instantly claimed formula, i.e., Formula I, as a copolymer obtainable therefrom since it has been held "when there is motivation to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR, 550 U.S. at 402-03, 82 USPQ2d at 1390.
Saboowala et al. discloses wherein the compound is added in an amount between 10-70 wt% (col. 4, l. 13-17). The reference further suggests wherein such is added in a manner that provides for a foam capable of being stabilized in the presence of crude oil (col. 10, l. 10-13; col. 10, l. 59-63). Although silent to the amount thereof in ppm, given the absence of evidence of the criticality thereof, it is the position of the Office that one having ordinary skill in the art would recognize an optimal amount of the compound to employ in order to provide a foam capable of remaining stabilized in the presence of crude oil therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). 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 amount of compound as critical and it is unclear if any unexpected results are achieved by providing for such. Since the surfactant of Saboowala et al. is suggested as providing a stabilized foam in the presence of crude oil, as is instantly disclosed by Applicant, it does not appear that such would be considered an unexpected result of using the presently claimed amount thereof, and, as such, the determination of optimal amount of compound in ppm would be achievable through routine experimentation in the art in order to attain a stabilized foam in the presence of crude oil therewith.
With respect to new dependent claim 26, Saboowala et al. discloses wherein the compound is added in an amount between 10-70 wt% (col. 4, l. 13-17). The reference further suggests wherein such is added in a manner that provides for a foam capable of being stabilized in the presence of crude oil (col. 10, l. 10-13; col. 10, l. 59-63). Although silent to the amount thereof in ppm, given the absence of evidence of the criticality thereof, it is the position of the Office that one having ordinary skill in the art would recognize an optimal amount of the compound to employ in order to provide a foam capable of remaining stabilized in the presence of crude oil therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). 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 amount of compound as critical and it is unclear if any unexpected results are achieved by providing for such. Since the surfactant of Saboowala et al. is suggested as providing a stabilized foam in the presence of crude oil, as is instantly disclosed by Applicant, it does not appear that such would be considered an unexpected result of using the presently claimed amount thereof, and, as such, the determination of optimal amount of compound in ppm would be achievable through routine experimentation in the art in order to attain a stabilized foam in the presence of crude oil therewith.
Claims 11 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Saboowala et al. as applied to claim 1 above, and further in view of Fan et al. (US 2015/0299506).
With respect to dependent claims 11 and 24, Saboowala et al. discloses wherein the co-solvent, i.e., solvent, is an alcohol or glycol, such as methanol, ethanol, ethylene glycol, propylene glycol or dipropylene glycol monomethyl ether (col. 4, l. 28-32). The reference, however, fails to disclose wherein the co-solvent is selected from the group of solvents as claimed in claim 11 or 24. Fan et al. teaches co-solvents used in compositions for treating a hydrocarbon-bearing formation (abstract) wherein examples thereof include cosolvents disclosed by Saboowala et al., such as dipropylene glycol methyl ether, ethylene glycol and propylene glycol, and alcohols such as methanol and ethanol, as well as alternatives thereto, including butoxyethanol ([0128]). It would have been obvious to one having ordinary skill in the art to try a cosolvent such as butoxyethanol as an alternative to the cosolvents disclosed by Saboowala et al. in order to yield the predictable result of providing a water-miscible solvent therein suitable for use in a subterranean formation. Fan et al. suggests butoxyethanol as selected from a finite list of possibilities of cosolvents and when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
Response to Arguments
Applicant’s arguments and amendments with respect to the specification objection to the abstract and 35 USC 112 rejections, as set forth in the previous office action, have been fully considered and are persuasive. The 35 USC 112 rejections, as set forth therein, have been withdrawn.
Applicant asserts Saboowala does not teach or suggest a method meeting the claimed criteria of a solvent selected from the group as claimed by independent claim 1. The Examiner respectfully disagrees. Saboowala discloses wherein the composition contains a co-solvent, i.e., a solvent, wherein such is selected from a group that includes alcohols and glycols. As such, Saboowala provides for a solvent as claimed.
Applicant asserts Saboowala does not unambiguously teach or suggest an alcohol alone as the solvent.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., an alcohol alone as the solvent) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The Examiner notes, instant independent claim requires wherein the composition comprises a compound of Formula I and a solvent selected from the group as claimed, and, therefore, Saboowala provides for the invention as claimed.
Applicant further reasserts unexpected results regarding the compositions, wherein such are able to provide superior foam height performance across a range of different oil and water ratios.
The Examiner notes, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). The instant claims do not require any particular oil and/or water ratio and/or requirement for foam height. Furthermore, it is noted that the features upon which applicant relies (i.e., superior foam height at particular oil/water ratios) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As such, the rejections are maintained.
Conclusion
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
04/24/26
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