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 .
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 1-6 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 “extraction of the naphthenic acids”, however, it is unclear how the method can achieve such a method step, as the naphthenic acids are previously recited in the preamble as being in produced water, however, no method step regarding such produced water is performed, so it is unclear how such acids can be extracted from such produced water. Additionally, the analysis step is also unclear for similar reasons, namely, because it does not require analysis of any particular substance/sample, so it is unclear how such mass spectrometry is required to be done, or whether the method merely includes performing any sort of mass spectrometry that includes paper ionization. Further, the method steps are unconnected by limitation, and thus have several gaps therebetween, and accordingly it is unclear what the method as a whole is required to perform. Similarly, ‘ionization on paper’ does not appear to require the use of the cellulose paper. Finally, the claim references (NH2-PSI-MS), but it is not clear whether this is intended to further limit the method, or whether this is a mere labelling of the step (c). Because the claim does not require any specific surface modification, labelling with the NH2 is unclear as well. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘extraction of the naphthenic acids of the produced water using the cellulose paper immersed in the produced water’ and ‘analysis of the produced water by paper spray ionization mass spectrometry (PSI-MS) using the cellulose paper after immersion in the produced water.
Claim 3 requires ‘a homemade universal support’, however, it is unclear how ‘homemade’ and ‘universal’ limits the support, as the technique by which the support is made would not appear to limit the method in any patentable sense, and universal is not defined in any particular manner within the disclosure and appears to only be disclosed as supporting the paper. Additionally, claim 3 requires “in order to keep the cellulose paper immersed in the produced water comprising naphthenic acids during the extraction time.”, however, no extraction time is previously required in the claims, and furthermore, the produced water is not previously required to be a part of the method (e.g., introduced, etc.), and thus it is unclear whether this is and intended use limitation of the support, or whether this is intended to be an additional method step. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘wherein the extraction of the naphthenic acids is performed using a support with a clamp, whereby the cellulose paper is immersed in the produced water comprising naphthenic acids during an extraction time’.
Claim 4 is similarly unclear in its recitation of (NH2-PSI-MS). In view of the above interpretation, claim 4 is interpreted as ‘wherein the analysis is performed with the following parameters…’, so as not to repeat limitations interpreted as required in claim 1.
Claim 5 recites “a size” and “each side”, however, no particular sides are referred to, and ‘size’ is general enough to include lengths, thicknesses, etc., and thus it is unclear which sides are required to have such dimensions. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as reciting ‘a length’ and ‘each edge’ to ensure the lateral sides (i.e., not faces) of the paper are limited in length (i.e., not thickness).
Claims that depend on the above rejected claims are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
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.
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Douglas (Douglas, et al, 2012,“Paper Spray Ionization for the analysis of Naphthenic Acids,” Irving k. Barber School of the Arts and Sciences, 7th Annual Undergraduate Research Conference, pp. 5-6.) in view of Ouyang (USPN US 11287414 B2).
Regarding claim 1, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Douglas teaches a method for analysis, characterization and direct quantification of naphthenic acids in produced water, comprising:
(a)
(b) extraction of the naphthenic acids (Whole document; Douglas describes using paper spray ionization with mass spectrometry for the identification of naphthenic acids, which necessarily includes the paper being saturated with the water disclosed therein); and
(c) analysis by mass spectrometry with ionization on paper (NH2-PSI-MS) (Whole document; Douglas describes using paper spray ionization with mass spectrometry for the identification of naphthenic acids).
Douglas does not explicitly teach the use of cellulose paper, and modifying the surface thereof.
However, an ordinarily skilled artisan in this context would have an advanced degree in a physical science/engineering (or equivalent experience), and would thus have a relatively high level of ordinary skill and knowledge. Such an ordinarily skilled artisan could readily chose a suitable form of paper for such an application.
Nevertheless, Ouyang teaches the use of a surface modified cellulose paper for use in a PSI for MS analysis (Col. 6, line 66 – Col. 7, line 51; Col. 8, line 6 – Col. 9, line 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Douglas to include the teachings of Ouyang to achieve the use of cellulose paper, and modifying the surface thereof.
Doing so represents combining known prior art elements according to known methods in order to achieve predictable results, and would allow one, as taught by Ouyang, to control the porosity and internal flow structures of the paper to control the PSI.
Regarding claim 4, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Douglas in view of Ouyang teaches the method, according to claim 1.
Douglas in view of Ouyang does not explicitly teach wherein the analysis is performed in a mass spectrometer with a cellulose paper ionization source (NH2-PSI-MS) with the following parameters: spray voltage: 2.8 kV; capillary temperature: 275 °C; full scan, m/z range 100 to 500.
However, an ordinarily skilled artisan having the aforementioned high level of ordinary skill/knowledge would readily recognize each of these parameters as typical operating conditions that could be readily optimized by routine experimentation.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Douglas in view of Ouyang to achieve wherein the analysis is performed in a mass spectrometer with a cellulose paper ionization source (NH2-PSI-MS) with the following parameters: spray voltage: 2.8 kV; capillary temperature: 275 °C; full scan, m/z range 100 to 500, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233, and/or since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Examiner notes for completeness that M. da Silva discloses similar such conditions, which are sufficient to render obvious the temperature, voltage, and m/z range.
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Douglas in view of Ouyang and M. da Silva (DOI: 10.1039/d1ay01541a).
Examiner notes that M. da Silva is Applicant provided prior art via the IDS dated 07/02/2025 (cited as Silva et al).
Regarding claim 2, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Douglas in view of Ouyang teaches the method, according to claim 1.
Douglas in view of Ouyang does not explicitly teach wherein the modification of the surface of the cellulose paper is carried out with (3-aminopropyl)triethoxysilane (APTES), and wherein the cellulose paper is cut and submerged for 5 min in a solution of 1% APTES in ethanol/water (80:20, v/v), heat-treated in an oven at 110 °C for 3 hours, and washed with 100% ethanol to remove excess reagents and dried at room temperature.
However, Ouyang discloses surface modification with tridecafluoro-1,1,2,2-tetrahydrooctyl-1-trichlorosilane to improve the properties of the paper for receiving and transporting the fluid/ions, and which similarly produces silane surface groups. Modifying the surface modifying solution applied to the carrier/emission paper to better coordinate the target substance would be within the abilities of an ordinarily skilled artisan.
Nevertheless, M. da Silva teaches wherein the modification of the surface of the [carrier] is carried out with (3-aminopropyl)triethoxysilane (APTES), and wherein the [carrier] is cut and submerged for 5 min in a solution of 1% APTES in ethanol/water (80:20, v/v), heat-treated in an oven at 110 °C for 3 hours, and washed with 100% ethanol to remove excess reagents and dried at room temperature (Section 2.2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Douglas in view of Ouyang to include wherein the modification of the surface of the [carrier] is carried out with (3-aminopropyl)triethoxysilane (APTES), and wherein the [carrier] is cut and submerged for 5 min in a solution of 1% APTES in ethanol/water (80:20, v/v), heat-treated in an oven at 110 °C for 3 hours, and washed with 100% ethanol to remove excess reagents and dried at room temperature, applied to the paper carrier of Douglas (and/or Ouyang).
Doing so represents combining known prior art techniques according to known methods in order to achieve predictable results, and would allow one, as taught by M. da Silva, to functionalize the surface for better sensitivity for the targeted acidic compoungs.
Regarding claim 5, Douglas in view of Ouyang and M. da Silva teaches the method, according to claim 2.
Douglas in view of Ouyang and M. da Silva does not explicitly teach wherein the cellulose paper is laser-cut with a size of 1.5 cm on each side.
However, Ouyang teaches the edges of the paper having lengths of as small as 5 mm, and as large as 10 mm (See Figs. 40 and related description), which correspond to 0.5 and 1 cm, respectively. Additionally, the prior art Koga teaches cutting to lengths of 5 mm and 20 mm, and or having radii of differing values between 9 and 33 mm (Analysis and Catalytic performance test sections).
It is Examiner’s opinion that this disclosure would be sufficient to obviate the size of 1.5 cm for a side of the paper. Additionally, the shape of the papers of each of Ouyang and Koga differ in certain embodiments, and as such an ordinarily skilled artisan could readily conceive of forming the shape of the paper in any reasonable geometry (understood to mean, capable of being laser cut by standard techniques). Furthermore, while not explicitly disclosed as using laser cutting, generic laser cutting is would be a well-known technique to an ordinarily skilled artisan (as well as in various other related and unrelated arts, as the technique is ubiquitous), and the precise size to optimize the paper could be readily determined by routine experimentation.
Accordingly, it is Examiner’s opinion that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Douglas in view of Ouyang and M. da Silva, to include wherein the cellulose paper is laser-cut with a size of 1.5 cm on each side, either in view of the ranges disclosed by Ouyang and/or Silva, or , since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233, and/or since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Douglas in view of Ouyang and M. da Silva and/or Koga (DOI: 10.1039/c1jm10543d).
Regarding claim 3, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Douglas in view of Ouyang teaches the method, according to claim 1.
Douglas in view of Ouyang does not explicitly teach wherein the extraction of the naphthenic acids is performed using a homemade universal support with a clamp in order to keep the cellulose paper immersed in the produced water comprising naphthenic acids during the extraction time.
However, an ordinarily skilled artisan having the aforementioned high level of ordinary skill, in reduction to practice, could readily conceive of a structure to ensure sufficient saturation of the paper in the target water without inventive activity. Such an ordinarily skilled artisan would be readily apprised of typical laboratory equipment, including a clamp connected to a support to hold a paper beneath the surface of a solution. For example, both M. da Silva (Visual Abstract; Introduction; Section 2.2) and Koga (Preparation of NH2- and PEI-modified paper by a silane coupling technique section) disclose soaking a carrier (e.g., wooden piece and paper, respectively) in such a surface modifying agent by submerging the carrier, and would thus necessarily include some such structure, which an ordinarily skilled artisan could readily apply in practice.
As such, it is Examiner’s opinion that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Douglas in view of Ouyang to include wherein the extraction of the naphthenic acids is performed using a homemade universal support with a clamp in order to keep the cellulose paper immersed in the produced water comprising naphthenic acids during the extraction time, as taught by M. da Silva and/or Koga.
Doing so represents a mere reduction to practice using conventional elements to achieve methods and techniques disclosed in the prior art.
Regarding claim 6, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Douglas in view of Ouyang and M. da Silva and/or Koga teaches the method, according to claim 3.
M. da Silva further teaches wherein the [carrier] is immersed in the produced water comprising naphthenic acids for 1 min (Fig. 4; Sections 2.5, 3.3).
As discussed above, cellulose paper is disclosed as the carrier in Ouyang and Koga and paper is disclosed in Douglas, and accordingly, the combination achieves each and every limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J GASSEN whose telephone number is (571)272-4363. The examiner can normally be reached M-F 9-5.
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/CHRISTOPHER J GASSEN/Examiner, Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
