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 .
DETAILED ACTION
This Final Office action is based on the 18/947595 application originally filed November 14, 2024.
Claims 1, 3-6 and 10-25, filed September 17, 2025, are pending and have been fully considered. Claims 2 and 7-9 have been canceled. Claims 19-25 are new.
It is to be noted, the Non-Final Rejection mailed January 20, 2026 is replaced/superseded by this Final Office action due to the previous Office action, mailed January 20, 2026, was mailed under the incorrect code. All rejections and subject matter remain the same.
The applied claim objection for claim 18 has been withdrawn in light of applicants claimed amendments and remarks.
The applied rejection under 112 2nd rejection is withdrawn in light of applicants claimed amendments and remarks.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-6 and 10-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu et al. (EP 4269530 A1) hereinafter “Xu”.
Regarding Claims 1, 3-6 and 10-23
Xu discloses in the abstract, a composition for use as a multifunctional wax dispersant to treat subterranean formations for the recovery of oil and gas from oil and gas wells, as well as to the process of preparation thereof.
Xu discloses in paragraph 0014, a wax dispersant composition for use in subterranean applications comprising a carrier medium, a compound A) and a compound B), wherein the compound A) is a glycolipid biosurfactant selected from rhamnolipids, sophorolipids, glucolipids, cellulose lipids, mannosylerythritol lipids, trehalose lipids or a mixture thereof.
Xu discloses in paragraph 0017, the term "wax dispersant composition" in the context of the present invention refers to a mixture of surfactant based chemical agents that disperse and suspend visually or light microscopically identifiable wax aggregates that are not precipitating, but instead remain dispersed or suspended in bulk fluids. Indeed, to keep oil flowing and not depositing in downhole or flowlines, it is essential to avoid solid or gel sediments which are unsuitable for further processing on a large industrial scale, because crude oils with wax aggregates are difficult to pump without large pumping pressure drops.
Xu further discloses in paragraph 0019, the total amount of compounds A) and B) is from 20 to 100% by weight, based on the total weight of all compounds of the wax dispersant composition not including the carrier medium.
Xu discloses in paragraph 0021, the term "carrier medium" refers to the liquid in the wax dispersant composition of the invention and is preferably selected from the group consisting of water, acid, liquified hydrocarbon, or a mixture thereof, more preferably water.
Xu discloses in paragraph 0022, the total content of carrier medium in the wax dispersant composition is from 10 to 90% by weight, based on the total weight of the wax dispersant composition.
Xu discloses in paragraph 0023, "biosurfactants" are understood as meaning all glycolipids produced by fermentation. The term "biosurfactant" also covers glycolipids that are chemically or enzymatically modified after fermentation, as long as structurally a glycolipid remains. Raw materials for producing the biosurfactants that can be used are carbohydrates, in particular sugars such as e.g. glucose and/or lipophilic carbon sources such as fats, oils, partial glycerides, fatty acids, fatty alcohols, long-chain saturated or unsaturated hydrocarbons.
Xu discloses in paragraph 0025, the composition comprises, as compound A), at least one biosurfactant selected from rhamnolipids, sophorolipids, glucolipids, cellulose lipids, mannosylerythritol lipids and trehalose lipids, preferably rhamnolipids, sophorolipids and glucolipids, most preferably sophorolipids.
Xu further discloses in paragraph 0051, the wax dispersant composition may comprise further additives used in wax dispersant compositions to treat subterranean formations for the recovery of oil and gas from oil and gas wells used, such as compounds C) or D) described below.
Xu discloses in paragraph 0052, the wax dispersant composition further comprises a compound C), which is a nonionic alcohol ethoxylate surfactant. These alcohol ethoxylates can be branched or linear and contain an ethylene oxide chain attached to a branched or linear alcohol.
Xu discloses in paragraph 0055, examples of alcohol ethoxylates are the ethoxylated alcohol product from Evonik, TOMADOL® 91-2.5, containing an average of 2.7 ethylene oxide groups with an HLB value of 8.5 (with the formula R(OC2H4)nOH wherein R is an aliphatic hydrocarbyl radical containing from 9 to 11 carbon atoms and with an average value of n being 2.7), or the ethoxylated alcohol product from Evonik, TOMADOL® 91-6, containing an average of 6 ethylene oxide groups with an HLB value of 12.4 (with the formula R(OC2H4)nOH wherein R is an aliphatic hydrocarbyl radical containing from 9 to 11 carbon atoms and with an average value of n being 6).
Xu discloses in paragraph 0056, the wax dispersant composition may further comprise a compound D), which is an alkylbenzene sulfonate, which belongs to the chemical groups of alkylbenzene sulfonates, which are anionic surfactants, consisting of a hydrophilic sulfonate headgroup and a hydrophobic alkylbenzene tail-group. A particularly preferred compound D) is Triethanolamine TEA Dodecylbenzene Sulfonate (TEA-DDBSA).
Xu further discloses in paragraph 0057, the amounts of the carrier medium, the compound A) and the compound B) in the wax dispersant composition, and optionally compounds C) and D), sum up to at least 90% by weight, based on the total weight of the wax dispersant composition.
Xu discloses in paragraph 0060, the wax dispersant composition for treating waxy crude oils and condensates to enhance oil recovery. The wax dispersant composition is an additive composition which is added to the treatment fluid.
Xu discloses in paragraph 0061, a method for treating a crude oil with a wax dispersant composition to enhance oil recovery by reducing interfacial tension between the crude oil and the treatment fluid in the recovery of oil and gas from crude oil and gas wells.
Xu discloses in paragraph 0062, the term "crude oil" or "waxy crude oils and condensates" is equally defined as the crude oil that contains high amount of long chain paraffin wax (alkanes) compounds, making the crude possess a high pour point and become viscous at lower temperatures than wax appearance temperatures. The term "treatment fluid" refers to the carrier medium in field applications. Preferably, the treat rate of wax dispersant composition (additive composition) in the treatment fluid is from 0.01% to 1% by weight, based on the total weight of the treatment fluid injected for the recovery of oil and gas from crude oil and gas wells.
The claimed invention is anticipated by the reference because the reference teaches a composition which comprises all of the claimed components. In the alternative, no patentable distinction is seen to exist between the reference and the claimed invention absent evidence to the contrary.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 24 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (EP 4269530 A1) hereinafter “Xu” in view of Bennett et al. (US 2015/0011453) hereinafter “Bennett”.
Regarding Claims 24 and 25
Xu discloses the method of independent claim 1 of the present invention but fails to further teach the composition comprises solvents.
However, it is known in the art to add solvents and binding agents to a crude oil additive composition in order to treat the oil and reduce build up in the separation equipment and pipelines, as taught by Bennett.
Bennett discloses in paragraph 0002, cleaner/corrosion inhibitor compositions, and more particularly to compositions for removing oilfield hydrocarbon and iron sulfide based deposits from equipment and for providing protection to the equipment against corrosive fluids and gases.
Bennett discloses in paragraph 0003, the residual oil and other particles such as paraffin, asphaltenes, iron sulfide and biomass can build up in the separation equipment and pipelines. This form of deposit is referred to in the industry as schmoo. If left untreated, this form of deposition can plug lines, which can lead to loss of revenue and/or equipment failure, and further, can result in casualties.
Bennett further discloses in paragraph 0025, a method of preparing a cleaner/corrosion inhibitor composition is also provided. The method comprises combining a polyamine component and a sulfonic acid component to provide a polyamine sulfonic acid salt; and combining the polyamine sulfonic acid salt component and a synergist, optionally at least one corrosion inhibitor component, and optionally at least one solvent. The polyamine component can comprise a tetraethylenepentamine, a pentaethylenehexamine, a hexaethyleneheptamine, and combinations thereof. The sulfonic acid component can be linear or branched dodecylbenzenesulfonic acid or a combination thereof.
Bennett discloses in paragraph 0103, the compositions disclosed herein can include a solvent. The solvent can be present in an amount of 10 wt % to 80 wt %, based on total weight of the composition. Bennett further discloses in paragraph 0104, suitable solvents include, but are not limited to, alcohols, hydrocarbons, ketones, ethers, aromatics, amides, nitriles, sulfoxides, esters, and aqueous systems. The solvent can be water, isopropanol, methanol, ethanol, 2-ethylhexanol, heavy aromatic naphtha, toluene, ethylene glycol, ethylene glycol monobutyl ether (EGMBE), diethylene glycol monoethyl ether, or xylene. Representative polar solvents suitable for formulation with the composition include water, brine, seawater, alcohols (including straight chain or branched aliphatic such as methanol, ethanol, propanol, isopropanol, butanol, 2-ethylhexanol, hexanol, octanol, decanol, 2-butoxyethanol, etc.), glycols and derivatives (ethylene glycol, 1,2-propylene glycol, 1,3-propylene glycol, ethylene glycol monobutyl ether, etc.), ketones (cyclohexanone, diisobutylketone), N-methylpyrrolidinone (NMP), N,N-dimethylformamide, and the like. Representative non-polar solvents suitable for formulation with the composition include aliphatic hydrocarbons such as pentane, hexane, cyclohexane, methylcyclohexane, heptane, decane, dodecane, diesel, and the like; aromatic hydrocarbons such as toluene, xylene, heavy aromatic naphtha; and fatty acid derivatives (acids, esters, amides), and the like.
It is to be noted, Bennett discloses the claimed compounds of the claimed invention (i.e. isopropanol and ethylene glycol) but fails to specifically state that are binding agents. However it is the examiners position the compounds of Bennett would have the same binding properties as disclosed by the claimed invention due to compounds and its properties are inseparable.
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. There-fore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) MPEP 2112.01
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add the solvents of Bennett to the crude oil of Xu. The motivation to do so is to use a solvent additive composition in crude oil in order to aid in the treatment of the oil and reduce build up in the separation equipment and pipelines.
Response to Arguments
Applicant’s arguments directed to the newly submitted claimed amendments, filed September 17, 2025, with respect to the rejection(s) of claim(s) 1, 3-6 and 10-25 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Xu et al. (EP 4269530 A1) hereinafter “Xu” and Xu et al. (EP 4269530 A1) hereinafter “Xu” in view of Bennett et al. (US 2015/0011453) hereinafter “Bennett”.
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 LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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