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 request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
Applicant’s arguments, filed on 05/18/2026, with respect to Claims 1-2, 4, 6-8,10-11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ahrenst et al. (US 2008/0064614 A1) previously), and further in view of Klandekar et al. (US 2020/0181513 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Therefore, the rejection has been withdrawn.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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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) (“Kundu” herein)
Claim 1.
Kundu discloses a treatment composition comprising
0.1 ppm to 10,000 ppm by weight of one or more sulfonate polymers in a solvent, wherein the one or more sulfonate polymers are selected from poly(methylene naphthalene sulfonate) homopolymers; (i.e. disulfonates, napthalene sulfonates linear and branched alkyl sulfonates, [0014, 0053] 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]
Claim 2.
Kundu discloses the treatment composition of claim 1, wherein the solvent is insoluble in water. [0045]
Claim 11.
Kundu discloses the treatment composition of claim 1 wherein the treatment composition is a treatment solution. [0032, 0110]
Claim 12.
Kundu discloses the treatment composition of claim 1, wherein the treatment composition further comprises a total 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]
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, 6-8,10-11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ahrenst et al. (US 2008/0064614 A1) ("Ahrenst" herein- cited previously) and further in view of Parris et al. (US 2012/0152544 A1) (“Parris” herein).
(Claims contain only selected species)
Claim 1
Ahrenst discloses a treatment composition comprising [0011]
0.1 ppm to 10,000 ppm by weight of one or more sulfonate polymers in a solvent, wherein the one or more sulfonate polymers are selected from poly(methylene naphthalene sulfonate) homopolymers; [0067, 0117, 0125] and
the solvent is a compound or a mixture of compounds. [0070, 0130],
Ahrenst however does not explicitly disclose 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.
Parris teaches the above limitation (See paragraphs 0040 Parris teaches this limitation in that an embodiment, the well treatment fluid may further comprise an organic solvent selected from the group consisting of diesel oil, kerosene, paraffinic oil, crude oil, LPG, toluene, xylene, ether, ester, mineral oil, biodiesel, vegetable oil, animal oil, and mixtures thereof.) for the purpose of having the treatment fluid may be allowed to contact the subterranean formation for a period of time. In some embodiments, the treatment fluid may be allowed to contact hydrocarbons, formations fluids, and/or subsequently injected treatment fluids. [0044]
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 the method of Ahrenst with the above limitation, as taught by Parris, in order to have the treatment fluid may be allowed to contact the subterranean formation for a period of time. In some embodiments, the treatment fluid may be allowed to contact hydrocarbons, formations fluids, and/or subsequently injected treatment fluids.
Claim 2
Ahrenst discloses the treatment composition of claim 1. Ahrenst however does not explicitly disclose, wherein the solvent is insoluble in water. (Same as claim 1)
Claim 4
Ahrenst discloses the treatment composition of claim 1, further comprising one or more sulfonate salts having the formula
(R-SO³-)nXⁿ⁺, R is a hydrocarbyl moiety having between 10 and 40 carbons and optionally including one or more hydroxyl moieties, and
where n=1,
is Na further wherein
the treatment composition comprises a total of 0.1 ppm to 10,000 ppm by weight of the combination of the one or more sulfonate polymers and the one or more sulfonate salts. [0067, 0101, 0115-0117, 0120, 0123]
Claim 5
Ahrenst discloses the treatment composition of claim 4 wherein the weight ratio of the one or more sulfonate salts to the one or more sulfonate polymers is between 100:1 and 1:100. [0067, 0101, 0115-0117, 0120, 0123]
Claim 6
Ahrenst discloses the treatment composition of claim 1 wherein the sulfonate polymer comprises one or more repeating units having formula (a): [0125]
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Claim 7
Ahrenst discloses the treatment composition of claim 6 wherein the sulfonate polymer is a homopolymer. [0117, 0125]
Claim 8
Ahrenst discloses the treatment composition of claim 6 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. [0115- 0117]
Claim 10
Ahrenst discloses the treatment composition of claim 9 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. [0067, 0125]
Claim 11
Ahrenst discloses the treatment composition of claim 1 wherein the treatment composition is a treatment solution. [0011]
Claim 12
Ahrenst discloses the treatment composition of claim 1, wherein the treatment composition further comprises a total of 0.1 ppm to 10,000 ppm of one or more adjuvants selected from: 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. [0069]
Claims 1, 2, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 2012/0157354 A1) (“Li” herein)
Claim 1.
Li discloses a treatment composition comprising
one or more sulfonate polymers in a solvent, wherein the one or more sulfonate polymers are selected from poly(methylene naphthalene sulfonate) homopolymers [0036-0039] 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. [0047]
Li discloses the claimed invention except for 0.1 ppm to 10,000 ppm by weight of one or more sulfonate polymers. It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to have the 0.1 ppm to 10,000 ppm by weight of one or more sulfonate polymers, since it has been held that [W]here the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involve only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 2.
Li discloses the treatment composition of claim 1, wherein the solvent is insoluble in water. [0047]
Claim 11.
Li discloses the treatment composition of claim 1 wherein the treatment composition is a treatment solution. [0027, 0042]
Claim 12.
Li discloses the treatment composition of claim 1, wherein the treatment composition further comprises a total 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. [0032-0033]
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 9-10 is rejected under 35 U.S.C. 103 as being unpatentable over Kundu as applied to claim 1 above, and further in view Applicant's Admitted Prior Art (hereinafter, "Admission").
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.
Claims 9-10 is rejected under 35 U.S.C. 103 as being unpatentable over Li as applied to claim 1 above, and further in view Applicant's Admitted Prior Art (hereinafter, "Admission").
Claims 9-10.
Li discloses the treatment composition of claim 1. Li 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 Li 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.
Claims 9-10 is rejected under 35 U.S.C. 103 as being unpatentable over Ahrenst as applied to claim 1 above, and further in view Applicant's Admitted Prior Art (hereinafter, "Admission").
Claims 9-10.
Ahrenst discloses the treatment composition of claim 1. Ahrenst 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 Ahrenst 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
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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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 05/22/2026
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