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 Objections
Claims 1-20 are objected to because of the following informalities: In independent claim 1, Applicant recites “24 h.” Based on the specification, it appears “h” is intended to be hours. Replacement of “h” with -hours- is advised so the time frame is clearly defined. Appropriate correction is required. Claims 2-20 are objected to herein by virtue of their dependency upon a rejected base claim.
Claim 11 is objected to because of the following informalities: In line 2, Applicant recites “group consisting of a an ammonium salt.” Deletion of “a” is advised. Appropriate correction is required.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 recites “delayed by at least 24 h.” This is a range with an unbounded upper limit, and, therefore, encompasses an amount of time so inconceivably high that it cannot reasonably be possible in the present invention. To make a point through hyperbole, the present application does not provide full enablement for a delay of 240 h, 2400 h or 24,000 h (increasable ad nauseam), even though these time frames are encompassed in the claimed range.
Claims 2-20 are rejected by virtue of their dependency upon a rejected base claim.
Claims 1-11 and 13-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 recites “a temperature of at least 150°F.” This is a range with an unbounded upper limit, and, therefore, encompasses a temperature so inconceivably high that it cannot reasonably be possible in the present invention. To make a point through hyperbole, the present application does not provide full enablement for a temperature of 500°F, 1000°F or 3000°F (increasable ad nauseam), even though these amounts are encompassed in the claimed range.
Claims 2-11 and 13-20 are rejected by virtue of their dependency upon a rejected base claim.
The Examiner notes, dependent claim 12 recites an upper temperature limit of 320°F, and, as such, has not been included in this rejection. Applicant is advised to add such a temperature to claim 1.
Claim 2 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 2 recites “a melting point of at least 130°C.” This is a range with an unbounded upper limit, and, therefore, encompasses a melting point so inconceivably high that it cannot reasonably be possible in the present invention. To make a point through hyperbole, the present application does not provide full enablement for a melting point of 500°C, 1000°C or 3000°C (increasable ad nauseam), even though these amounts are encompassed in the claimed range.
Claim 5 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 5 recites “at least 1 hour.” This is a range with an unbounded upper limit, and, therefore, encompasses an amount of time so inconceivably high that it cannot reasonably be possible in the present invention. To make a point through hyperbole, the present application does not provide full enablement for contacting for 100, 1000 or 10,000 hours (increasable ad nauseam), even though these time frames are encompassed in the claimed range.
Claim 14 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 14 recites “at least 24 hours.” This is a range with an unbounded upper limit, and, therefore, encompasses an amount of time so inconceivably high that it cannot reasonably be possible in the present invention. To make a point through hyperbole, the present application does not provide full enablement for contacting for 100, 1000 or 10,000 hours (increasable ad nauseam), even though these time frames are encompassed in the claimed range.
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 1-20 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 “high” in claim 1 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” in the preamble of claim 1 renders the scope of the claim indefinite as it is not clear as to how “high” the temperature and/or pressure is intended to be in the wellbore in order for such to be considered a “high”-pressure, “high”-temperature wellbore. Is a particular range for each of the pressure and temperature associated therewith? Clarification is required.
Claim 1 recites “at least 24 h.” This is a range with an unbounded upper limit, and, as such, it is unclear as to the extent of time for which Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claims 1-11 and 13-20 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 “a temperature of at least 150°F.” This is a range with an unbounded upper limit, and, as such, it is unclear as to the extent of temperature range Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite. The Examiner notes, claim 12 recites an upper limit for the temperature range, and, as such, has not been included in this rejection. Applicant is advised to amend claim 1 to include such an upper limit in order to overcome this rejection.
Claim 2 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 2 recites “a melting point of at least 130°C.” This is a range with an unbounded upper limit, and, as such, it is unclear as to the extent of melting point Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claim 5 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 5 recites “at least 1 hour.” This is a range with an unbounded upper limit, and, as such, it is unclear as to the extent of time Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claim 14 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 14 recites “at least 24 hours.” This is a range with an unbounded upper limit, and, as such, it is unclear as to the extent of time Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
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 1-3, 5-9, 11-14, 17, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Palmer et al. (US 6,924,253- cited by Applicant)
With respect to independent claim 1, Palmer et al. discloses a method of inhibiting sulfate-comprising scale formation in a high-pressure high temperature (HPHT) wellbore, comprising:
injecting a chemical scale inhibitor into a wellbore disposed in a subterranean geological formation to form a chemical scale inhibitor composition in the wellbore (col. 6, l. 63-67, wherein the ionic liquid remains in the hydrocarbon zone where treatment is desired; col. 7, l. 7-10, wherein scale removal is controlled or the release thereof is delayed);
contacting the chemical scale inhibitor composition with a wall of the wellbore to delay an onset of sulfate-comprising scale formation on the wall of the wellbore (abstract, wherein the wellbore or well casing is treated),
wherein the chemical scale inhibitor comprises butylmethylimidazolium hexafluorophosphate (col. 9, l. 23-25) and the chemical scale inhibitor composition comprises an effective amount of the butylmethylimidazolium hexafluorophosphate (col. 2, l. 28-43),
wherein the onset of sulfate-comprising scale formation is delayed (col. 6, l. 63-67, wherein the ionic liquid remains in the hydrocarbon zone where treatment is desired; col. 7, l. 7-10, wherein scale removal is controlled or the release thereof is delayed), and
wherein the wall of the wellbore contacted with the chemical scale inhibitor composition is at a temperature of at least 150oF (col. 4, l. 51-54; col. 8, l. 57-61; Table 3, wherein contact is made in a temperature range of 66-79oC, i.e., 150-175oF).
Palmer et al. discloses wherein the chemical scale inhibitor is an ionic liquid, and, further, describes such as including a cation such as 1,3-dialkylimidazolium (col. 5, l. 41-50) and an anion of PF6-, i.e., hexafluorophosphate (col. 6, l. 65-67), wherein PF6- is disclosed as a preferred anion where water stability is desired (col. 6, l. 6). In further example suggestion, Palmer et al. discloses butylmethylimidazolium hexafluorophosphate as a known superior ionic liquid solvent (col. 9, l. 23-25). The reference, however, fails to explicitly recite wherein such is 1-butyl-2,3-dimethylimidazolium hexafluorophosphate as instantly claimed.
Given the examples disclosed by Palmer et al. noted above, along with the suggested general formula wherein further description of R groups for the cation are described (col. 5, l. 12-50), it is the position of the Office that the provision of 1-butyl-2,3-dimethylimidazolium hexafluorophosphate as the ionic liquid in Palmer et al. would be obvious to try in order to yield the predictable result of providing scale treatment to the wellbore therewith. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, i.e., the suggested R groups for the cation of Palmer et al., and combination thereof with an anion such as hexafluorophosphate, 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, if a prior art species or subgenus is structurally similar to that claimed, its disclosure may provide a reason for one of ordinary skill in the art to choose the claimed species or subgenus from the genus, based on the reasonable expectation that structurally similar species usually have similar properties. See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904 and In re Deuel, 51 F.3d 1552, 1558, 34 USPQ2d 1210, 1214 (Fed. Cir. 1995) wherein it was held "Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties."
It is the position of the Office that 1-butyl-2,3-dimethylimidazolium hexafluorophosphate is indeed structurally similar to the specific examples disclosed by Palmer et al. and thus indeed would be obvious to one having ordinary skill in the art (see further evidence in Conclusion wherein 1-butyl-2,3-dimethylimidazolium hexafluorophosphate is a known alternative to examples explicitly disclosed by Palmer et al..)
Palmer et al. discloses wherein the ionic liquids exhibit excellent zonal control and can remain where treatment is desired (col. 6, l. 63-67); such are provided in an effective amount to remove the scale to the desired degree in the wellbore or near wellbore area (col. 3, l. 45-53). Palmer et al. additionally suggests wherein a delayed release mechanism may be employed to provide the ionic liquid at the scale location (col. 7, l. 7-10). Although silent to explicitly defining the effective amount of 1-butyl-2,3-dimethylimidazolium hexafluorophosphate as within the w/v% range instantly claimed, as well as explicitly defining the delay of at least 24 hours and the temperature of the wall of the wellbore as at least 150oF, given the suggested method of Palmer et al. and contact temperatures of the examples, it would have been obvious to one having ordinary skill in the art to provide for an effective amount of 1-butyl-2,3-dimethylimidazolium hexafluorophosphate within the range as instantly claimed when contacting a wellbore wall at a temperature of at least 150oF so that the onset of sulfate-comprising scale formation is delayed for at least the amount of time as claimed in order to effectively treat the scale formation within the formation and thus achieve the desired effects therewith, as intended by Palmer et al. since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
The Examiner notes, Palmer et al. suggests contact of a wellbore wall with the same chemical scale inhibitor composition as instantly claimed, and further indicates wherein such may stay within a targeted zone where treatment is desired (col. 6, l. 63-67). As such, the chemical scale inhibitor of Palmer et al. would indeed be expected to act in the manner as claimed, i.e., delay an onset of sulfate-comprising scale formation on the wall of the wellbore. If there is any difference between the sulfate-comprising scale inhibiting properties of the composition of Palmer et al. and that of the instant claims, the difference would have been minor and obvious insofar as because “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
With respect to dependent claim 2, Palmer et al. discloses wherein the sulfate-comprising scale comprises at least one as claimed (abstract). The reference further suggests wherein the chemical scale inhibitor is injected into the wellbore as a mixture with water (col. 11, l. 2-6). The chemical scale inhibitor may further be encapsulated by various means, several of which, including US 4,919,209 (King herein), is incorporated by reference (col. 7, l. 10-col. 8, l. 25). King teaches synthetic wax encapsulants (col. 3, l. 12-33), wherein the melting point thereof is between 120-160oC (col. 4, l. 3-6). It would have been obvious to one having ordinary skill in the art to try injecting the chemical scale inhibitor of Palmer et al. as within particles of a synthetic wax as suggested by King in order to slow the release of the chemical scale inhibitor at the intended location when desired.
With respect to dependent claim 3, Palmer et al. discloses wherein the ionic liquids exhibit excellent zonal control and can remain where treatment is desired (col. 6, l. 63-67); such are provided in an effective amount to remove the scale to the desired degree in the wellbore or near wellbore area (col. 3, l. 45-53). Although silent to explicitly defining the effective amount of 1-butyl-2,3-dimethylimidazolium hexafluorophosphate as within the w/v% range instantly claimed, it would have been obvious to one having ordinary skill in the art to provide for an effective amount of 1-butyl-2,3-dimethylimidazolium hexafluorophosphate within the range as instantly claimed so that the onset of sulfate-comprising scale formation is delayed and thus the desired effects are achieved therewith, as intended by Palmer et al. since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to dependent claim 5, Palmer et al. suggests wherein the contacting is performed for at least one hour under static well pressure (col. 13, l. 10-20, wherein the well is shut in for at least the amount of time as claimed).
With respect to dependent claim 6, Palmer et al. suggests wherein acid is generated upon contact of the ionic liquid with aqueous fluid in the wellbore/formation (col. 11, l. 2-19) and further indicates wherein acid is not formed until water is slowly added; such prevents corrosion in above ground components (col. 11, l. 22-30). Although silent to the pH at an initiation of the contacting, since Palmer et al. suggests wherein acid is slowly formed, it would have been obvious to one having ordinary skill in the art to provide for a pH of the chemical scale inhibitor composition at initiation of contacting within the range as instantly claimed in order to inhibit corrosion of above-ground components; since generation of the acid would begin slowly and thus after initiation of contacting, the pH of the chemical scale inhibitor prior to such would optimally fall closer to the basic range.
With respect to dependent claim 7, Palmer et al. discloses wherein the sulfate-comprising scale comprises barium sulfate (abstract).
With respect to dependent claim 8, Palmer et al. discloses wherein the chemical scale inhibitor is an aqueous solution (col. 11, l. 2-10). Although silent to explicitly defining the effective amount of 1-butyl-2,3-dimethylimidazolium hexafluorophosphate as the w/v% range instantly claimed, it would have been obvious to one having ordinary skill in the art to provide for an effective amount of 1-butyl-2,3-dimethylimidazolium hexafluorophosphate as instantly claimed so that the onset of sulfate-comprising scale formation is delayed and thus the desired effects are achieved therewith, as intended by Palmer et al. since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to dependent claim 9, Palmer et al. suggests wherein acid is generated upon contact of the ionic liquid with aqueous fluid in the wellbore/formation (col. 11, l. 2-19) and further indicates wherein acid is not formed until water is slowly added (col. 11, l. 22-30). Although silent to the pH at a termination of contacting, since Palmer et al. suggests wherein acid is not generated until after the ionic liquid is within the wellbore, i.e., after contacting, it would have been obvious to one having ordinary skill in the art to provide for a pH of the chemical scale inhibitor composition within the range of from about 1 to 6, i.e., an acidic pH, as instantly claimed, since generation of the acid would indeed cause the pH to become more acidic and thus fall within the acidic range of the pH scale and one having ordinary skill in the art would recognize the optimal value thereof so as to ensure and control whether an inorganic or organic fraction of scale is attacked first (col. 11, l. 2-10).
With respect to dependent claim 11, Palmer et al. discloses wherein the chemical scale inhibitor composition further comprises at least one additive selected from the group as claimed (col. 11, l. 10-67).
With respect to dependent claim 12, Palmer et al. discloses wherein the ionic liquids have a wide liquidus range that includes ambient temperatures of 300oC (col. 8, l. 56-61). Although silent to explicitly defining the temperature of the wall of the wellbore as claimed, given the contact of a wellbore wall within a subterranean formation, as well as the ability of the ionic liquids to be used at ambient temperatures of 300oC, and, further, examples wherein contact is made in a temperature range of 66-79oC (Table 3), i.e., 150-175oF, it would have been an obvious matter of choice and design to one having ordinary skill in the art to contact a wellbore wall having a temperature within the range as claimed as based on the environmental conditions encountered thereat since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
With respect to dependent claim 13, Palmer et al. discloses wherein the sulfate-comprising scale comprises barium sulfate; the reference further suggests wherein additional scales that can be treated include calcium carbonate (col. 10, l. 1-29; Table 3). Although silent to wherein the sulfate-comprising scale comprises calcium sulfate, since Palmer et al. suggests the ability to utilize the chemical scale inhibitor with both calcium containing and sulfate containing scales, as well as contact of a wellbore wall with the same chemical scale inhibitor composition as instantly claimed, the chemical scale inhibitor of Palmer et al. would be expected to act in the manner as claimed, i.e., delay an onset of sulfate-comprising scale comprising calcium sulfate on the wall of the wellbore. If there is any difference between the sulfate-comprising scale inhibiting properties of the composition of Palmer et al. and that of the instant claims, the difference would have been minor and obvious insofar as because “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
With respect to dependent claim 14, Palmer et al. suggests through example wherein contacting is performed for at least 24 hours (col. 13, l. 10-20).
With respect to dependent claims 17, 18 and 20, Palmer et al. suggests the same chemical scale inhibitor as instantly claimed for at least the reasons set forth above with respect to independent claim 1. Palmer et al. further suggests wherein ionic liquids have favorable viscosity and density characteristics (col. 8, l. 56-67). Although silent to the density and/or viscosity range of instantly claimed 1-butyl-2,3-dimethylimidazolium hexafluorophosphate, since Palmer et al. suggests the same chemical scale inhibitor as claimed, the density and viscosity thereof would be expected to fall within the ranges claimed therefor since it has been held “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Allowable Subject Matter
Claims 4, 10, 15, 16 and 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph of independent claim 1, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2014/0357092 suggests ionic liquids used for the same purpose to include 1-ethyl-3-methylimidazolium tetrachloroaluminate, i.e., an example ionic liquid of Palmer et al., cited above, and 1-butyl-2,3-dimethylimidazolium hexafluorophosphate in [0016].
WO 2025/263258-A1 suggests 1-ethyl-3-methylimidazolium tetrachloroaluminate, i.e., an example ionic liquid of Palmer et al., cited above, and 1-butyl-2,3-dimethylimidazolium hexafluorophosphate as alternative fluorine compounds having an imidazole skeleton.
US 2009/0044942 teaches 1-butyl-3-methylimidazolium hexafluorophosphate as an ionic liquid used in well treatment fluids.
US 6,350,721 teaches butylmethyl imidazolium hexafluorophosphate as an ionic liquid used in well treatment fluids.
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
03/12/26