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 .
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:
“PAPEMP” in claim 1 is used by the claim to mean “polyamino polyester methylene phosphonic acid,” while the accepted meaning is “polyamino polyether methylene phosphonic acid.” The specification “defines” PAPEMP as both “polyamino polyester methylene phosphonic acid” and “polyamino polyether methylene phosphonic acid” and therefore, it is unclear as to which the specification is defining as the composition of PAPEMP.
“ATMP” in claim 1 is used by the claim to mean “amino tris-methylene phosphonic acid,” while the accepted meaning is “amino trimethylene phosphonic acid.” The specification defines ATMP as both “amino tris-methylene phosphonic acid,” and “amino trimethylene phosphonic acid” and therefore, it is unclear as to which the specification is defining as the composition of ATMP.
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.
Claims 1-12 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. 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).
i. The term “PAPEMP” in claim 1 is used by the claim to mean “polyamino polyester methylene phosphonic acid,” while the accepted meaning is “polyamino polyether methylene phosphonic acid.” The term is indefinite because the specification does not clearly redefine the term. The Examiner notes, Applicant uses both the claimed terminology and the accepted meaning in the specification interchangeably and it is unclear as to which is intended to be claimed. Clarification throughout the claims and specification is required. Applicant, however, is advised to consider whether such imparts new matter.
ii. The term “ATMP” in claim 1 is used by the claim to mean “amino tris-methylene phosphonic acid,” while the accepted meaning is “amino trimethylene phosphonic acid.” The term is indefinite because the specification does not clearly redefine the term. The Examiner notes, Applicant uses both the claimed terminology and the accepted meaning in the specification interchangeably and it is unclear as to which is intended to be claimed. Clarification throughout the claims and specification is required. Applicant, however, is advised to consider whether such imparts new matter.
Claims 1-12 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 term “normal” in claim 1 is a relative term which renders the claim indefinite. The term “normal” 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 “normal” renders the scope of the claims indefinite as it is unclear what is intended to be “normal” production. Is a particular amount of fluid produced during “normal” production? A particular practice used to achieve such? Is “normal” production during a particular phase of the recovery process? Applicant appears to attempt to define a particular process associated with “normal” production in dependent claim 12. Applicant is advised to remove the term “normal” from the claims and include the actual steps of claim 12 in independent claim 1. Claims 2-12 are rejected by virtue of their dependency upon a rejected base claim.
Claims 7 and 8 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 7 recites the limitation “wherein treating the wellbore comprises.” There is insufficient antecedent basis for this limitation in the claim as there is no prior step of treating the wellbore in claim 1, upon which claim 7 depends. The Examiner notes, Applicant recites a step of “treating the wellbore” in claim 2. It is unclear if Applicant is intending to further define the treatment of the wellbore to remove existing scale in claim 2 or if Applicant is claiming a separate treatment step. Clarification is required. Claim 8 is rejected by virtue of its dependency upon a rejected base claim.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 2022/0120159) in view of Shen et al. (US 2023/0383171), or, in the alternative, in view of Zhang et al. (CN 103787518 A – all citations are to provided English translation)
With respect to independent claim 1, Chen et al. discloses a method for implementing a squeeze treatment to apply a scale inhibitor in a wellbore (abstract), comprising:
mixing a scale inhibitor pill, comprising: a combination of phosphonic acids including amino tris-methylene phosphonic acid (ATMP) ([0016]); and
injecting pre-flush chemicals into the wellbore ([0022]);
injecting the scale inhibitor pill into the wellbore ([0022]);
injecting an over flush into the wellbore ([0023]; [0034]);
shutting in the wellbore for a target period of time ([0024]; [0017]); and
resuming normal production ([0017]; [0025]).
Chen et al. discloses wherein scale refers to any mineral or solid salt deposit ([0003]) and wherein scale inhibitors of the above method may include a phosphonic acid, and wherein such a phosphonic acid may be selected from a group that includes ATMP, HEDP and EDTMP, as well as any combinations thereof ([0016]). The reference, however, fails to disclose wherein such a group of phosphonic acids includes PAPEMP, and, therefore, fails to provide for the mixing of a scale inhibitor comprising ATMP and PAPEMP as claimed.
Shen et al. teaches method of inhibiting and preventing scale in brines encountered and associated with producing wells ([0001]-[0003]) wherein suitable scale inhibitors include ATMP, HEDP, EDTMP, PAPEMP, and mixtures thereof ([0021]).
Since Chen et al. discloses wherein mixtures of phosphonic acids may be used as a scale inhibitor in the above method and Shen et al. teaches the same scale inhibitors, as well as wherein such a group further includes PAPEMP, as well as mixtures thereof, it would have been obvious to one having ordinary skill in the art to try a mixture of ATMP and PAPEMP as the scale inhibitor pill in the method of Chen et al. in order to yield the predictable result of inhibiting the formation of scale in the producing well treated therewith. The Examiner notes, since both Chen et al. and Shen et al. teach mixtures of phosphonic acids and Shen et al. explicitly provides for a mixture of ATMP and PAPEMP, 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 be motivated to select Applicant’s claimed combination of mineral scale inhibitors from the finite list of possibilities suggested by Shen et al. in order to provide a mixture of phosphonic acids suitable to prevent scale inhibition.
In the alternative, Zhang et al. teaches a scale inhibitor composition, comprising: polyamino polyether methylene phosphonic acid (PAPEMP) ([0008]) and amino trimethylene phosphonic acid (ATMP) ([0007], wherein the organic phosphine is disclosed as ATMP), wherein such is suitable for use in environments having high hardness as well as low temperatures (abstract). Such a composition is further suggested as having a scale dispersing effect ([0012]).
Since Chen et al. discloses a scale inhibitor comprising ATMP and mixtures with other components are suggested and Zhang et al. suggests the inclusion of PAPEMP with ATMP so as to inhibit scale formation and prolong service life of equipment in environments having high hardness, it would have been obvious to one having ordinary skill in the art to try a combination of ATMP with PAPEMP, as suggested by Zhang et al. in the method of Chen et al. in order to yield the predictable result of inhibiting scale formation therein, particularly in low temperature environments, as well as those having high hardness.
With respect to dependent claim 2, Chen et al. discloses treating the wellbore to remove existing scale ([0022]).
With respect to dependent claim 3, Chen et al, in view of the inclusion of PAPEMP of Shen et al. and/or Zhang et al., as set forth above, provides for wherein mixing the scale inhibitor pill comprises forming a solution of PAPEMP and ATMP in a brine base fluid ([0016]; [0026]).
With respect to dependent claims 4-6, Shen et al. suggests wherein PAPEMP can be used in a mixture with ATMP for scale inhibition purposes, as set forth above. Although silent to the specific combinations thereof at the approximate weight percents as claimed, it would have been obvious to one having ordinary skill in the art to try an amount of each of the PAPEMP and ATMP as claimed for each of claims 4-6 as based on the suggested amounts of Shen et al. in order to yield the predictable result of inhibiting scale formation therewith. 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, 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 weight percent combinations for each of PAPEMP and ATMP as critical and it is unclear if any unexpected results are achieved by using the instantly claimed weight percents for each in the combinations set forth by each of claims 4-6. Since the composition Chen et al. in view of Shen et al. indeed inhibits the formation of scale in brine based fluids having high chloride concentrations, as does Applicant’s, it does not appear that such would be considered an unexpected result of using the presently claimed weight percents set forth in claims 4-6, and, as such, the determination of optimal weight percent combinations of ATMP and PAPEMP would be achievable through routine experimentation in the art.
In the alternative, with respect to dependent claim 4-6, Zhang et al. teaches wherein the PAPEMP is present in an amount of 20-40% ([0007]) and wherein the ATMP is present in an amount of 15-35% ([0007]) Although silent to the specific combinations thereof at the approximate weight percents as claimed, it would have been obvious to one having ordinary skill in the art to try an amount of each of the PAPEMP and ATMP as claimed for each of claims 4-6 as based on the suggested amounts of Zhang et al. in order to yield the predictable result of inhibiting scale formation therewith. There are a finite number of amounts for each of the PAPEMP and ATMP to provide in a composition capable of scale inhibition and one of ordinary skill would recognize the optimal amounts of each in order to effectively inhibit scale therewith. 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. Furthermore, 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%.). 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."). 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 weight percent combinations for each of PAPEMP and ATMP as critical and it is unclear if any unexpected results are achieved by using the instantly claimed weight percents for each in the combinations set forth by each of claims 4-6. Since the composition of Zhang et al. indeed inhibits the formation of scale, as does Applicant’s, it does not appear that such would be considered an unexpected result of using the presently claimed weight percents set forth in claims 4-6, and, as such, the determination of optimal weight percent combinations of ATMP and PAPEMP would be achievable through routine experimentation in the art.
With respect to dependent claim 7, Chen et al. discloses wherein treating the wellbore comprises injecting an acid treatment fluid into the wellbore ([0022], wherein acid dissolution is used to clean debris or other substances; [0016], wherein the overall treatment process injects acids as part of the treatment).
With respect to dependent claim 8, Chen et al. discloses allowing the treatment fluid to return to a surface after the treatment ([0025], wherein the acid/scale inhibitor returns to the surface in the produced fluids).
With respect to dependent claim 9, Chen et al. discloses wherein injecting the pre-flush chemicals into the wellbore comprises injecting a solution of mutual solvents, or clay stabilizers, or both into the wellbore ([0027]; [0029], wherein the pre-flush provides improved clay stabilization).
With respect to dependent claim 10, Chen et al. discloses wherein injecting the overflush into the wellbore comprises pushing the scale inhibitor pill into a reservoir from the wellbore ([0023]).
With respect to dependent claim 11, Chen et al. discloses wherein shutting the wellbore and for the target period of time comprises preventing flow in or out of the wellbore for between about 2 hours and about 5 days ([0017]).
With respect to dependent claim 12, Chen et al. discloses wherein resuming normal production comprises: opening the wellbore to allow produced fluids to flow from the wellbore; and monitoring the produced fluids to determine a concentration of a scale inhibitor compounds ([0025]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2025/0026975 discloses a method for implementing a squeeze treatment to apply a scale inhibitor wherein the scale inhibitor may include ATMP, PAPEMP, or mixtures thereof.
CN 104371684 A discloses a deplugging agent and process in a well wherein a combination of ATMP and PAPEMP are injected therein.
WO 2024/026137 discloses a method for single stage scale inhibition wherein a scale inhibitor such as ATMP, PAPEMP or mixtures thereof are injected; a pre-flush and post-flush are optional.
US 2023/0366296 discloses scale removal agents that include PAPEMP, ATMP and mixtures thereof which may be used with a pre-flush or post-flush that consists of mutual solvents.
US 2020/0157417 discloses scale inhibitors that include blends of phosphonates, wherein ATMP and PAPEMP are disclosed, and, further, wherein such are mixed with various brines.
CN 105645611 A discloses a scale inhibitor composition that includes 13% ATMP and 6% PAPEMP.
CN 106430648 A discloses a scale inhibitor composition that includes 10 parts ATMP and 6 parts PAPEMP.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached on 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
10/23/25