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 .
Response to Arguments
Applicant’s arguments, filed on 08/21/2026, with respect to Claims 1, 2,11, and 12 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Kundu (US 2017/0292657 A1), Claims 1-2, 4, 6-8,10-11 and 12 rejected under 35 U.S.C. 103 as being unpatentable over Ahrenst et al. (US 2008/0064614 A1) and further in view of Parris et al. (US 2012/0152544 A1), and Claims 1, 2, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2012/0157354 A1)have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
Claims 1, 2, 4, 5, 6, 7, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over by Kundu (US 2017/0292657 A1) ("Kundu" herein – cited previously) and further in view of Ahrenst et al. (US 2008/0064614 A1) (“Ahrenst” herein – cited previously).
Claim 1.
Kundu discloses a treatment composition
consist essentially of 0.1 ppm to 10,000 ppm by weight of one or more polymers in a solvent, [0014, 0029, 0044, 0053-0054] and
the solvent is a compound or a mixture of compounds selected from the group consisting of toluene, xylene, heavy aromatic naphtha, diesel fuels, kerosenes, heavy aromatic distillates, and gasolines. [0045]
Kudu however does not explicitly disclose the polymers as the one or more sulfonate polymers selected from poly(methylene naphthalene sulfonate) homopolymers.
Ahrenst teaches the above limitation (See paragraphs 0115, 00125, 0109 → Ahrenst teaches this limitation in that Copolymers obtained by formaldehyde condensation of naphthalene sulfonate with other monomers such as phenol, alkylated phenols, bisphenols of various structures such as bisphenol F (formaldehyde), or bisphenol A (acetone), etc. may also be used, whether obtained by acid or by base catalysis. The monomeric drag reduction enhancers can be true monomers, or they can be oligomers of the polymeric drag reduction enhancers, whereas suitable polymeric drag reduction enhancers can be polymers formed by appropriate polymerization reactions of monomeric drag reduction enhancers. For example, sodium naphthalene sulfonate is a suitable monomeric drag reduction enhancer counterion and sodium polynaphthalene sulfonate is a suitable polymeric drag reduction enhancer. Useful examples for combination with cationic and zwitterionic drag reducing surfactants include Daxad.RTM. 16L and Daxad.RTM. 17. Daxad.RTM. 17 is a solid material which is a polycondensation product of sodium naphthalene sulfonate with formaldehyde, having a molecular weight of about 2000-3000 Da. Daxad 16L is a 50% aqueous solution of Daxad.RTM. 17. Therefore, both products have the same molecular weight.) for the purpose of a lowering horsepower requirement to pump the fluid (and therefore a higher drag reduction). [0111]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Kundu, with the above limitation, as taught by Ahrenst, in order to provide a polymer that lowers horsepower requirement to pump the fluid (and therefore a higher drag reduction).
Or a different interpretation of Kundu
Kundu discloses a treatment composition
consist essentially of 0.1 ppm to 10,000 ppm by weight of one or more polymers in a solvent, [0014, 0029, 0044, 0053-0054] and optionally of 0.1 ppm to 10,000 ppm of one or more adjuvants selected from the group consisting of: one or more corrosion inhibitors, one or more antipolymerants, one or more paraffin inhibitors, one or more corrosion inhibitors, one or more antiscale agents, one or more defoaming agents, one or more emulsifiers, one or more demulsifiers, and one or more biocides. [0092-0093]
the solvent is a compound or a mixture of compounds selected from the group consisting of toluene, xylene, heavy aromatic naphtha, diesel fuels, kerosenes, heavy aromatic distillates, and gasolines. [0045]
Kudu however does not explicitly disclose the polymers as the one or more sulfonate polymers selected from poly(methylene naphthalene sulfonate) homopolymers.
Ahrenst teaches the above limitation (See paragraphs 0115, 00125, 0109 → Ahrenst teaches this limitation in that Copolymers obtained by formaldehyde condensation of naphthalene sulfonate with other monomers such as phenol, alkylated phenols, bisphenols of various structures such as bisphenol F (formaldehyde), or bisphenol A (acetone), etc. may also be used, whether obtained by acid or by base catalysis. The monomeric drag reduction enhancers can be true monomers, or they can be oligomers of the polymeric drag reduction enhancers, whereas suitable polymeric drag reduction enhancers can be polymers formed by appropriate polymerization reactions of monomeric drag reduction enhancers. For example, sodium naphthalene sulfonate is a suitable monomeric drag reduction enhancer counterion and sodium polynaphthalene sulfonate is a suitable polymeric drag reduction enhancer. Useful examples for combination with cationic and zwitterionic drag reducing surfactants include Daxad.RTM. 16L and Daxad.RTM. 17. Daxad.RTM. 17 is a solid material which is a polycondensation product of sodium naphthalene sulfonate with formaldehyde, having a molecular weight of about 2000-3000 Da. Daxad 16L is a 50% aqueous solution of Daxad.RTM. 17. Therefore, both products have the same molecular weight.) for the purpose of a lowering horsepower requirement to pump the fluid (and therefore a higher drag reduction). [0111]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Kundu, with the above limitation, as taught by Ahrenst, in order to provide a polymer that lowers horsepower requirement to pump the fluid (and therefore a higher drag reduction).
Claim 2.
Kundu discloses the treatment composition of claim 1, wherein the solvent is insoluble in water. [0045]
Claim 4.
Kundu discloses a treatment composition
consist essentially of 0.1 ppm to 10,000 ppm by weight of one or more polymers in a solvent, [0014, 0029, 0044, 0053-0054] and optionally of 0.1 ppm to 10,000 ppm of one or more adjuvants selected from the group consisting of: one or more corrosion inhibitors, one or more antipolymerants, one or more paraffin inhibitors, one or more corrosion inhibitors, one or more antiscale agents, one or more defoaming agents, one or more emulsifiers, one or more demulsifiers, and one or more biocides. [0092-0093]
the solvent is a compound or a mixture of compounds selected from the group consisting of toluene, xylene, heavy aromatic naphtha, diesel fuels, kerosenes, heavy aromatic distillates, and gasolines. [0045]
Kudu however does not explicitly disclose the polymers as the one or more sulfonate polymers the one or more sulfonate polymers are selected from poly(methylene naphthalene sulfonate) homopolymers and copolymers, branched or crosslinked polymers having pendant benzenesulfonate moieties, and any combination thereof the one or more sulfonate salts have the formula wherein n is an integer between I and 4, R is a hydrocarbyl moiety having between 10 and 40 carbons and optionally including one or more hydroxyl moieties, and where n=1, X is Na, Ka, Li, K, NH4, NH₃-CH₂-CH₂-OH, or NH₂(CH₂- CH₂-OH)₂; where n=2, X is Mg, Zn, Zr, Ba, or Ca; where n=3, X is Al, Mn, or Fe[[;]], and where n=4, X is Ti or Zr.
;Ahrenst teaches the above limitation (See paragraphs 0115, 00125, 0109 → Ahrenst teaches this limitation in that Copolymers obtained by formaldehyde condensation of naphthalene sulfonate with other monomers such as phenol, alkylated phenols, bisphenols of various structures such as bisphenol F (formaldehyde), or bisphenol A (acetone), etc. may also be used, whether obtained by acid or by base catalysis. The monomeric drag reduction enhancers can be true monomers, or they can be oligomers of the polymeric drag reduction enhancers, whereas suitable polymeric drag reduction enhancers can be polymers formed by appropriate polymerization reactions of monomeric drag reduction enhancers. For example, sodium naphthalene sulfonate is a suitable monomeric drag reduction enhancer counterion and sodium polynaphthalene sulfonate is a suitable polymeric drag reduction enhancer. Useful examples for combination with cationic and zwitterionic drag reducing surfactants include Daxad.RTM. 16L and Daxad.RTM. 17. Daxad.RTM. 17 is a solid material which is a polycondensation product of sodium naphthalene sulfonate with formaldehyde, having a molecular weight of about 2000-3000 Da. Daxad 16L is a 50% aqueous solution of Daxad.RTM. 17. Therefore, both products have the same molecular weight.) for the purpose of a lowering horsepower requirement to pump the fluid (and therefore a higher drag reduction). [0111]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Kundu, with the above limitation, as taught by Ahrenst, in order to provide a polymer that lowers horsepower requirement to pump the fluid (and therefore a higher drag reduction).
Claim 5.
Kundu discloses the treatment composition of claim 4. Kundu however does not explicitly disclose wherein the weight ratio of the one or more sulfonate salts to the one or more sulfonate polymers is between 100: and 1:100. (Same as claim 4)
Claim 6.
Kundu discloses the treatment composition of claim 1. Kundu however does not explicitly disclose wherein the sulfonate polymer comprises one or more repeating units having formula (a): (Same as claim 1)
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Claim 7.
Kundu discloses the treatment composition of claim 1. Kundu however does not explicitly disclose wherein the sulfonate polymer is a homopolymer. (Same as claim 1)
Claim 8.
Kundu discloses the treatment composition of claim 1. Kundu however does not explicitly disclose wherein the sulfonate polymer is a copolymer further comprising one or more repeating units derived from the condensation of formaldehyde with phenol, resorcinol, or a combination thereof. (Same as claim 1)
Claim 11.
Kundu discloses the treatment composition of claim 1 wherein the treatment composition is a treatment solution. [0032, 0110]
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over by Kundu, Ahrenst, as applied to claim 1, and in further view of Applicant's Admitted Prior Art (hereinafter, "Admission"- cited previously).
Claims 9-10.
Kundu discloses the treatment composition of claim 1. Kundu however does not explicitly disclose disposed within a subsea umbilical, wherein the subsea umbilical is in fluid contact with a subsea reservoir, optionally wherein the subsea umbilical is one part of a subsea tree, and wherein the fluid contact with the subsea reservoir comprises fluid contact within a wellhead of the subsea reservoir or proximal to a wellhead of the subsea reservoir.
Admissions teaches the above limitation (See paragraph 0004 → Admissions teaches this limitation in that Operationally, fluids transported via umbilicals must withstand the harsh environmental conditions to which they are subjected not just at the wellhead, but while traversing the umbilical toward the wellhead to obtain injection. An injection fluid traversing an umbilical to a subsea depth of 1200-1550 m may be subjected to pressures of about 40 MPa at the wellhead, and is further subjected to widely variable temperatures during the traversing. For example, a temperature within a
reservoir may be as high as 90 °C, or even higher, while the temperature at the subsea mud-line is often less than 20 °C, in some cases as low as 0-5 °C.) ) for the purpose of having chemicals that reduce or prevent deposition asphaltene in crude oil and further are sufficiently stable in an injection fluid for umbilical injection into subsea wellheads. [0005]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Kundu with the above limitation, as taught by Admissions, in order to have chemicals that reduce or prevent deposition asphaltene in crude oil, and further are sufficiently stable in an injection fluid for umbilical injection into subsea wellheads.
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 SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Due Liu can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/ Primary Examiner, Art Unit 1616 10/06/2026
