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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/102,155 (‘155 herein), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Instant dependent claims 5 and 7 are presented as follows:
5. (Currently Amended) The nanomaterial composition of claim 1, wherein the organic solvent comprises hexane, heptane, toluene, vegetable oils, liquid wax, or combinations thereof.
7. (Original) The nanomaterial composition of claim 1, further comprising a nonaqueous stabilizing liquid around the reactive metal nanoparticles, wherein the nonaqueous stabilizing liquid comprises a synthetic oil, mineral oil, vegetable oil, liquid wax, silicone oil, or combinations thereof,
wherein the nonaqueous stabilizing liquid stabilizes the reactive metal nanoparticles.
Neither the instant specification, nor that of ‘155, sufficiently supports and/or describes the subject matter as instantly claimed.
With regard to claim 5, neither the instant specification nor that of ‘155 provides for the organic solvent used in the composition for reducing the viscosity of an oil as vegetable oil.
The specification rather describes wherein the metals are reduced to the desired size by blending in an oil such as vegetable oil in [0036], after which, such are dispersed in solvents which may also reduce heavy oil viscosity, such as pentane, hexane, heptane and toluene as described per [0037]. As such, vegetable oil is not disclosed as an organic solvent.
With regard to claim 7, neither the instant specification nor that of ‘155 provides for “a synthetic oil.”
As such, the instantly claimed subject matter is not supported by parent application ‘155.
Drawings
The drawings were received on 01/13/26. These drawings are accepted.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Instant dependent claims 5 and 7 are presented as follows:
5. (Currently Amended) The nanomaterial composition of claim 1, wherein the organic solvent comprises hexane, heptane, toluene, vegetable oils, liquid wax, or combinations thereof.
7. (Original) The nanomaterial composition of claim 1, further comprising a nonaqueous stabilizing liquid around the reactive metal nanoparticles, wherein the nonaqueous stabilizing liquid comprises a synthetic oil mineral oil, vegetable oil, liquid wax, silicone oil, or combinations thereof,
wherein the nonaqueous stabilizing liquid stabilizes the reactive metal nanoparticles.
The instant specification fails to sufficiently support and/or describe the subject matter as instantly claimed.
With regard to claim 5, the instant specification fails to describe the organic solvent as vegetable oil.
The specification rather describes wherein the metals are reduced to the desire
size by blending in an oil such as vegetable oil in [0036], after which, such are dispersed in solvents which may also reduce heavy oil viscosity, such as pentane, hexane, heptane and toluene as described per [0037]. As such, vegetable oil is not disclosed as an organic solvent.
With regard to claim 7, the instant specification fails to disclose “a synthetic oil.”
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.
Claim 6 is 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. Claim 6 has been amended to require wherein “substantially all” of the nanoparticles have a diameter in the range from about 5 to 200 nm. Such, however, is not disclosed in the specification as filed and, therefore, constitutes new matter.
Claim 21 is 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. New claim 21 recites “wherein the reactive metal nanoparticles are produced by blending bulk metal in the organic solvent.” Such, however, does not appear to be supported by the specification as filed. Although the specification discloses blending the bulk metal with a solvent such as silicone oil, mineral oil, vegetable oil or liquid wax to form the nanoparticles, the specification does not appear to suggest the blending of the bulk metal with a material disclosed as the organic solvent that is a component of the composition, i.e., hexane, heptane or toluene. For example, [0036]-[0037] of the specification as filed appears to suggest that after blending the bulk metal with a viscous oil such as silicone oil, engine oil, mineral oil, vegetable oil, liquid wax, the nanoparticles are dispersed in the organic solvent such as hexane, heptane or toluene that is a component of the composition used for reducing viscosity of an oil. The Examiner notes, Applicant appears to attempt to claim the organic solvents and viscous oils as interchangeable throughout the claims when such is not clearly defined and/or described within the specification.
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 claim 21 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. Claim 1 recites the limitation "the reactive metallic nanoparticles" in line 5. There is insufficient antecedent basis for this limitation in the claim. Applicant previously referred to the nanoparticles as reactive metal nanoparticles. Consistent use of terminology throughout the claim is required. The Examiner notes the term “metallic” is used in dependent claim 6, while “metal” is used in claim 7 and 21.
Claim 3, along with claim 4, dependent therefrom, 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. The term “high” in claim 3 is a relative term which renders the claim indefinite. The term “high” 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 term “high” renders the scope of the claim indefinite as it is unclear as to the extent of the shear required for blending and reducing the size of the nanoparticles. The specification fails to sufficiently define a particular shear necessary and/or used in such a process.
Claim 6 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.
The term “substantially” in claim 6 is a relative term which renders the claim indefinite. The term “substantially” 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 term “substantially” renders the scope of the claim indefinite as is it unclear as to the extent of particles necessary to have a diameter within the range as claimed. Must 99.9% of the particles have such a diameter? 95%? Clarification is required.
Claim 1 has been amended to require wherein the nanoparticles have a diameter of less than 200 nm. Claim 6, however, recites a diameter in the range of about 5 to about 200 nm. It is unclear if Applicant is attempting to include a diameter of 200 within the range of claim 6, i.e., “about 200,” when previously within claim 1 the range was less than such.
Claim 7 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 7 recites “The nanomaterial composition of claim 1, further comprising a nonaqueous stabilizing liquid around the reactive metal nanoparticles,” along with several liquids used as such, including vegetable oil and liquid wax. The Examiner notes, claim 1 requires “an organic solvent” and within dependent claim 5, Applicant defines the organic solvent as chosen from a list that includes vegetable oils and liquid wax. Although claim 7 recites “further comprising,” since the some of the same materials may be used as the organic solvent and as the nonaqueous stabilizing liquid, it is unclear if the organic solvent and the nonaqueous stabilizing liquid may be the same component, or, if Applicant is indeed intending two different and distinct components as used for such. 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 6 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 1 presently requires a majority of the nanoparticles as having a diameter of less than 200 nm. Dependent claim 6, however, recites wherein substantially all of the nanoparticles have a diameter in the range of from about 5 nm to about 200. As such, it appears Applicant is intending to include a diameter of 200 as part of the range when claim 1 previously excludes such by requiring less than 200 nm. 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 1-7 and 21are rejected under 35 U.S.C. 103 as being unpatentable over Bousaid et al. (US 4,085,799 – cited previously) in view of Mazyar et al. (US 2015/0144344 – cited previously).
With respect to independent claim 1, Bousaid et al. discloses a nanomaterial composition (col. 3, l. 59-66, wherein a preferable colloidal size range of 1 micron, i.e., 1000 nm, is disclosed, thereby providing for a “nanomaterial” composition) for reducing the viscosity of an oil (col. 4, l. 62- col. 5, l. 2), the nanomaterial composition comprising:
reactive metal nanoparticles (col. 3, l. 22-31, l. 41-43 and l. 59-66, wherein a preferable colloidal size range of 1 micron, i.e., 1000 nm, is disclosed, thereby providing for “nanoparticles”) comprising metallic Li, Na, K or a combination thereof (col. 2, l. 32-33; col. 3, l. 13-15); and
an organic solvent (col. 2, l. 33-41; col. 3, l. 5-13),
wherein the reactive metal nanoparticles are dispersed within the organic solvent such that the reactive metal nanoparticles are in contact with the organic solvent and the organic solvent prevents the reactive metal nanoparticles from premature contact with water, oxygen, or a combination thereof (col. 4, l. 40-61), and wherein the reactive metal nanoparticles react with water in oil to lower a viscosity of the oil and facilitate extraction from a body (col. 4, l. 62-col. 5, l. 30; col. 6, l. 51-55).
Bousaid et al. discloses wherein the particles are ground to a desired very fine particle size, wherein exemplary sizes include 1-20 micron range, with a preferable size of 1 micron, i.e., 1000 nm; it is suggested wherein the minimum particle size varies with the permeability of the formation into which the particle is injected, wherein low permeability formations require dispersions of alkali metal in the lower part of the particle size range (col. 3, l. 14-65). Although silent to a diameter of less than 200 nm as claimed, it is the position of the Office that the use of such a size reactive metal particle would have been obvious to one having ordinary skill in the art as based on the permeability of the formation into which the composition is injected since it has been "[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."). 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 size range for the reactive metal nanoparticles as critical, as further exemplified by Applicant’s inclusion in the disclosure of use of nanoparticles having a size of 1 nm to 1000 microns in several instances therein, including [0009], [0011] and [0012]. It is noted, such a size range is extensive and thus overlaps the size range of particles disclosed by Bousaid et al.. Since it is unclear if any unexpected results are achieved by using particles having a size as claimed, and since Bousaid et al. clearly discloses the use of reactive metal nanoparticles to achieve the same result as Applicant, as well as wherein such particles have a size that overlaps an extensive range of particle sizes disclosed by Applicant, it does not appear that reacting the particles with water in oil to lower a viscosity of the oil and facilitate extraction of the oil would be considered an unexpected result of using particles having a size within the range as instantly claimed, and, as such, the determination of optimal size therefor would be achievable through routine experimentation in the art as based on the permeability of the formation to be treated therewith.
Furthermore, the Office notes, Bousaid et al. discloses wherein the particle size must be sufficiently small so that the particles will pass freely through the injection well equipment and through at least major flow channels of the formation (col. 3, l. 14-21). Mazyar et al. further teaches reactive metal ([0021]) nanoparticle containing ([0034]) suspensions used to generate heat and facilitate a change in viscosity of a hydrocarbon material contained in a subterranean formation ([0020]) wherein suitable carrier fluids therefor include organic liquids, wherein the size and shape of each of the reactive particles may be selected based on the characteristics of the hydrocarbon-bearing subterranean formation. For example, the reactive particles may be sized and shaped to fit within interstitial spaces including pores, cracks, fractures and channels of the subterranean formation and each of the reactive particles may independently have an average particle diameter of less than or equal to about 500 nm, such as less than or equal to about 100 nm, less than or equal to about 50 nm, less than or equal to about 10 nm, or less than or equal to about 1 nm ([0034]). As such, it would have been obvious to one having ordinary skill in the art to provide for reactive metallic nanoparticles in the composition of Bousaid et al. wherein a majority of the nanoparticles have a diameter of less than 200 nm in order to allow for such to pass freely through pores, cracks, fractures and channels of the subterranean formation and provide for the generation of heat therewith so as to facilitate a change in viscosity of a hydrocarbon material contained within the pores, cracks, fractures and channels.
With respect to dependent claim 2, Bousaid et al. discloses wherein the reactive metal nanoparticles comprise metallic Na (col. 2, l. 32-33; col. 3, l. 14-16; col. 6, l. 41-46).
With respect to dependent claims 3 and 4, Bousaid et al. discloses wherein the reactive metal nanoparticles comprise size-reduced particles which have been reduced in size by high shear blending in a nonaqueous liquid, and, further, wherein the size-reduced particles are dispersed in a nonaqueous liquid during size reduction (col. 3, l. 14-58, wherein high shear mixing, i.e., blending, is disclosed).
With respect to dependent claim 5, Bousaid et al. discloses wherein the organic solvent comprises one as claimed (col. 2, l. 33-41; col. 3, l. 5-13, wherein the Examiner notes both hexane and heptane are suggested).
With respect to dependent claim 6, Bousaid et al. discloses wherein the particles are ground to a desired very fine particle size, wherein exemplary sizes include 1-20 micron range, with a preferable size of 1 micron, i.e., 1000 nm; it is suggested wherein the minimum particle size varies with the permeability of the formation into which the particle is injected, wherein low permeability formations require dispersions of alkali metal in the lower part of the particle size range (col. 3, l. 14-65). Although silent to wherein substantially all of such particles have a diameter within the range of 5-200 nm as claimed, it is the position of the Office that the use of such a size reactive metal particle would have been obvious to one having ordinary skill in the art as based on the permeability of the formation into which the composition is injected since it has been "[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."). 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 size range for the reactive metal nanoparticles as critical, as further exemplified by Applicant’s inclusion in the disclosure of use of nanoparticles having a size of 1 nm to 1000 microns in several instances therein, including [0009], [0011] and [0012]. It is noted, such a size range is extensive and thus overlaps the size range of particles disclosed by Bousaid et al. Since it is unclear if any unexpected results are achieved by using particles having a size as claimed, and since Bousaid et al. clearly discloses the use of reactive metal nanoparticles to achieve the same result as Applicant, as well as wherein such particles have a size that overlaps an extensive range of particle sizes disclosed by Applicant, it does not appear that reacting the particles with water in oil to lower a viscosity of the oil and facilitate extraction of the oil would be considered an unexpected result of using particles having a size within the range as instantly claimed, and, as such, the determination of optimal size therefor would be achievable through routine experimentation in the art as based on the permeability of the formation to be treated therewith. Furthermore, the Office notes, Bousaid et al. discloses wherein the particle size must be sufficiently small so that the particles will pass freely through the injection well equipment and through at least major flow channels of the formation (col. 3, l. 14-21). Mazyar et al. further teaches reactive metal ([0021]) nanoparticle containing ([0034]) suspensions used to generate heat and facilitate a change in viscosity of a hydrocarbon material contained in a subterranean formation ([0020]) wherein suitable carrier fluids therefor include organic liquids, wherein the size and shape of each of the reactive particles may be selected based on the characteristics of the hydrocarbon-bearing subterranean formation. For example, the reactive particles may be sized and shaped to fit within interstitial spaces including pores, cracks, fractures and channels of the subterranean formation and each of the reactive particles may independently have an average particle diameter of less than or equal to about 500 nm, such as less than or equal to about 100 nm, less than or equal to about 50 nm, less than or equal to about 10 nm, or less than or equal to about 1 nm ([0034]). As such, it would have been obvious to one having ordinary skill in the art to provide for reactive metallic nanoparticles in the composition of Bousaid et al. wherein “substantially all” of the nanoparticles have a diameter of 5-200 nm in order to allow for such to pass freely through pores, cracks, fractures and channels of the subterranean formation and provide for the generation of heat therewith so as to facilitate a change in viscosity of a hydrocarbon material contained within the pores, cracks, fractures and channels.
With respect to dependent claim 7, Bousaid et al. discloses the composition as set forth above, wherein the nanomaterial composition containing the organic solvent may be blended with an emulsifiable crude simultaneously during injection and/or prior to injection, thereby providing for a nonaqueous liquid around the reactive metal nanoparticles as claimed, so as to stabilize the composition so that such can be used for its intended purpose, i.e., accomplish the desired recovery of oil from the formation (col. 5, l. 24-61). The reference, however, fails to disclose wherein the nonaqueous liquid comprises one as claimed. Mazyar et al. further teaches reactive metal ([0021]) nanoparticle containing ([0034]) suspensions used to generate heat and facilitate a change in viscosity of a hydrocarbon material contained in a subterranean formation ([0020]) wherein suitable carrier fluids therefor include organic liquids such as crude oil, with an alternative thereto suggested as mineral oil ([0037]). It would have been obvious to one having ordinary skill in the art to try mineral oil as an alternative to the crude oil disclosed by Bousaid et al., and thereby stabilize the reactive metal nanoparticles therewith, in order to yield the predictable result of providing a suitable carrier for delivery of a reactive metal to a subterranean formation for reaction with water therein so as to reduce the viscosity of the oil in the formation and thereby facilitate recovery thereof. 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.
With respect to new dependent claim 21, Bousaid et al. suggests wherein the reactive metal nanoparticles are produced by blending bulk metal in the organic solvent (col. 3, l. 25-37, wherein larger particles of the metal, i.e., bulk metal, are disclosed as blended with the organic solvent). Furthermore, the Examiner notes, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Response to Arguments
Applicant’s remarks with respect to the objections to the priority claim and specification have been fully considered, but they are not persuasive. Applicant notes claims 5 and 7 have been amended while claim 8 was canceled. The Examiner notes the remaining subject matter not sufficiently supported by either the parent or instant application noted above.
Applicant’s amendments with respect to the claim objections have been fully considered and are persuasive in view of Applicant’s amendments. The claim objections have been withdrawn.
Applicant’s amendments with respect to the 35 USC 112 rejections have been fully considered and are persuasive in view of Applicant’s amendments made with respect thereto. However, the Examiner notes the new grounds of rejection now presented based on Applicant’s amendments.
Applicant’s amendments with respect to the 35 USC 102 and 103 rejections, as set forth in the previous Office Action have been fully considered. The Examiner notes, the 35 USC 102 rejections have been withdrawn in view of Applicant’s amendments to incorporate the nanoparticle size within independent claim 1. However, a modified grounds of rejection under 35 USC 103 has been set forth with respect to Bousaid in view of Mazyar.
Applicant notes independent claim 1 has been amended to require wherein a majority of the metallic nanoparticles have a diameter of less than 200 nm and asserts Bousaid is silent with respect to such. Applicant asserts it would not have been obvious to one of ordinary skill in the art to arrive at a majority of the reactive metallic nanoparticles as having such a diameter. Applicant asserts by Bousaid identifying 1 micron as the preferred lower limit, Bousaid teaches away from the claimed invention.
The Examiner respectfully disagrees; while Bousaid may suggests such is a preferred size, the reference does not explicitly state to exclude a smaller size. Moreso, the reference discloses wherein it is imperative that the particle size be sufficiently small so that the particles will pass freely through the injection equipment and at least a majority of the flow channels. The Examiner notes, Mazyar is now further provided above to suggest wherein smaller size reactive metallic particles having a size overlapping the range instantly claimed are used for pore sizes and channels found with subterranean formations. Furthermore, the instant specification discloses the use of particles within the instant invention having a size between 1 nm and 1000 microns in at least [0009]. There appears to be no explicit criticality for the use of particles of the instantly claimed size range and since the reactive metallic particles of Bousaid et al. are indeed used in a composition for the same purpose as Applicant’s it is the position of the Office that the instantly claimed size range would be obvious for at least the reasons as set forth above.
Applicant asserts the claimed subject matter exhibits unexpected, beneficial results that establish non-obviousness. Applicant notes [0060] demonstrates that a sodium nanofluid may be characterized as most of the particles being less than 200 nm in diameter and the specification illustrates such a sodium nanofluid achieved 81.6% recovery of extra heavy oil when compared to only 15.5% recovery with organic solvent alone.
The Examiner notes, whether 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. See In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) wherein claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims. In the instant case, the experiments limited to sodium are insufficient to rebut the obviousness rejection with respect to alternatively claimed lithium or potassium. See MPEP 716.02(d).
Furthermore, it is unclear if such “unexpected results” are indeed the result of the particle size of the reactive metals as Applicant has not presented any additional testing to show the criticality of the instantly claimed size range as compared to a particle size range outside of such; the specification rather discloses wherein particle sizes up to 1000 microns may be used throughout the body of the disclosure. No alternative experiments are provided with regard to such sized particles to illustrate the unexpected results and criticality of the smaller range now claimed.
Based on [0064] of the specification, it appears a change in recovery efficiency is rather brought about by tuning the amount of nanomaterials. Additionally, are any and all organic solvents capable of achieving such unexpected results? As noted above, "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” See MPEP 716.02(d). In the instant case, the Examiner notes, the claims encompass any organic solvent while Applicant’s alleged unexpected results are indeed associated with specific organic solvents used within the examples.
Instant independent claim 1 is a composition claim. Applicant is invited to consider further defining the composition by what it is rather than by what it is intended to do; for example, a particular amount/range of reactive metal nanoparticles in the composition and/or the specific organic solvents and/or amounts thereof included in the composition. Should the application of the composition indeed be distinguishable from that of the prior art, Applicant is invited to consider a divisional application with method claims drawn thereto.
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
02/05/26