DETAILED ACTION
Response to Amendment
The Amendment filed 6 March 2026 has been entered. Claims 1-6, 8-10, and 24-28 remain pending in the application. Claims 7 and 11-23 were previously withdrawn as being drawn to non-elected Inventions. Applicant’s Amendments to the Claims have overcome the Objections previously set forth in the Non-Final Office Action mailed 10 December 2025.
Allowable Subject Matter
Claims 24-28 are allowed.
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 11-23 would be rejoinable if Amended to refer to allowable claim 24 instead of claim 1.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Gul (2020/0102513) (cited previously).
Regarding independent claim 1, Gul discloses An asphaltene inhibiting composition (Title “ASPHALTENE-INHIBITING AROMATIC POLYMER COMPOSITIONS” and [0005]) consisting essentially of a mixture of ([0047] “the asphaltene-inhibiting composition can comprise an effective amount of the polymer corresponding in structure to Formula 1 and a component selected from the group consisting of a corrosion inhibitor, an organic solvent, an asphaltene inhibitor, a paraffin inhibitor, a scale inhibitor, an emulsifier, a water clarifier, a dispersant, an emulsion breaker, a reverse emulsion breaker, a gas hydrate inhibitor, a biocide, a pH modifier, a surfactant, and a combination thereof”) a sulfonate material with an amine condensate,
wherein the sulfonate material comprises one or more sulfonate salts ([0070] “The composition can include an additional asphaltene inhibitor. … Suitable asphaltene inhibitors include, but are not limited to, aliphatic sulfonic acids; alkyl aryl sulfonic acids; aryl sulfonates” and/or [0071] “The composition can include a paraffin inhibitor. … Suitable paraffin inhibitors include… dispersant/crystal modifier combinations. … Suitable paraffin dispersants include… dodecyl benzene sulfonate”), one or more sulfonate polymers ([0072] “The composition can include a scale inhibitor. … Suitable scale inhibitors include… salts of acrylamidomethyl propane sulfonate/acrylic acid copolymer (AMPS/AA), … and salts of a polymaleic acid/acrylic acid/acrylamidomethyl propane sulfonate terpolymer (PMA/AA/AMPS)”; both AMPS/AA copolymer and PMA/AA/AMPS terpolymer are sulfonate polymer via the AMPS monomers), or a mixture thereof; and
the amine condensate comprises a reaction product of one or more organic acids with one or more organic compounds having at least two amine groups ([0050] “The component of the anti-corrosion composition can comprise a corrosion inhibitor” and [0052] “The corrosion inhibitor component can comprise an imidazoline. The imidazoline can be, for example, imidazoline derived from a diamine, such as ethylene diamine (EDA), diethylene triamine (DETA), triethylene tetraamine (TETA) etc. and a long chain fatty acid such as tall oil fatty acid (TOFA)”).
Regarding the “consisting essentially of,” as below in Response to Arguments, this must be construed as “comprising” under Office practice, based on the current fact pattern. Accordingly, Gul anticipates the claim as written.
Regarding claims 8-10, Gul discloses “The imidazoline can be, for example, imidazoline derived from a diamine, such as ethylene diamine (EDA), diethylene triamine (DETA), triethylene tetraamine (TETA) etc. and a long chain fatty acid such as tall oil fatty acid (TOFA)” ([0052]). An imidazoline derived from DETA and TOFA would comprise an R of C17H33 as claimed. Accordingly, Gul discloses:
(claim 8) wherein the amine condensate reaction product comprises an imidazoline having a structure corresponding to formula (4): … wherein R2 is a linear or branched alkyl, alkenyl, alkaryl, or aryl group having 10 to 30 carbons and p is an integer between 1 and 5; and further
(claim 9) wherein p is 1 and R2 comprises C17H33; and/or
(claim 10) wherein the amine condensate reaction product is the reaction product of diethylene triamine with a tall oil fatty acid.
Claim Rejections - 35 USC § 102/103
Claims 2-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gul as in claim 1.
Regarding claims 2 and 3, Gul discloses:
“The composition can comprise from about 0.1 to 20 wt. %, 0.1 to 10 wt. %, or 0.1 to 5 wt. % of the corrosion inhibitors, based on total weight of the composition” ([0050]) such as “imidazoline derived from … diethylene triamine (DETA)… and … tall oil fatty acid (TOFA)” ([0052]);
“The composition can comprise from about 0.1 to 10 wt. %, from about 0.1 to 5 wt. %, or from about 0.5 to 4 wt. % of an additional asphaltene inhibitor, based on total weight of the composition” such as “aryl sulfonates” ([0070]) and/or “The composition can comprise from about 0.1 to 10 wt. %, from about 0.1 to 5 wt. %, or from about 0.5 to 4 wt. % of a paraffin inhibitor, based on total weight of the composition” such as “dodecyl benzene sulfonate” ([0071]); and
“The composition can comprise from about 0.1 to 20 wt. %, from about 0.5 to 10 wt. %, or from about 1 to 10 wt. % of a scale inhibitor, based on total weight of the composition” such as “salts of acrylamidomethyl propane sulfonate/acrylic acid copolymer (AMPS/AA), … and salts of a polymaleic acid/acrylic acid/acrylamidomethyl propane sulfonate terpolymer (PMA/AA/AMPS)” ([0072]).
These disclosed ranges plainly anticipate e.g. providing 1 wt% of each, and thus Gul anticipates a 1:1:1 weight proportion of each, which anticipates the ranges of:
(claim 2) wherein a weight proportion of the sulfonate material to the amine condensate is between 100:1 and 1:100; and/or
(claim 3) wherein the sulfonate material comprises one or more sulfonate salts and one or more sulfonate polymers present in a weight proportion of 100:1 to 1:100,
by providing e.g. 1 wt% of imidazoline derived from DETA and TOFA; 1 wt% of aryl sulfonates; 1 wt% of dodecyl benzene sulfonate; and 1 wt% of AMPS/AA or PMA/AA/AMPS polymer, and thus a 1:1:1 weight proportion.
Alternatively, even if it were somehow found that Gul fails to disclose providing these exact amounts of each, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Gul to provide, e.g., 1 wt% of imidazoline derived from DETA and TOFA; 1 wt% of aryl sulfonates; 1 wt% of dodecyl benzene sulfonate; and 1 wt% of AMPS/AA or PMA/AA/AMPS polymer, and thus a 1:1:1 weight proportion, with a reasonable expectation of success, in order to provide suitable amounts of each within the general conditions disclosed by Gul. Applicant may note that, after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See also MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.
Regarding claims 4 and 5, Gul discloses “The composition can include a paraffin inhibitor. … Suitable paraffin inhibitors include… dispersant/crystal modifier combinations. … Suitable paraffin dispersants include… dodecyl benzene sulfonate” ([0071]).
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." See MPE 2131.02.
In this case, although Gul does not explicitly state that “dodecyl benzene sulfonate” is referring to sodium dodecyl benzene sulfonate, Gul presumably is referring at least to sodium dodecyl benzene sulfonate as one such dispersant, insofar as sodium dodecyl benzene sulfonate is the most typical form of dodecyl benzene sulfonate in the art. One of ordinary skill in the art would at once envisage sodium dodecyl benzene sulfonate, upon reading “dodecyl benzene sulfonate” as in Gul. Accordingly, Gul inherently or implicitly discloses:
(claim 4) wherein one or more of the sulfonate salts have a structure corresponding to the formula (R-SO3-)nXn+, wherein n is an integer between 1 and 4; R is a hydrocarbyl moiety having between 10 and 40 carbons and optionally including one or more hydroxyl moieties; and
where n is 1, X is Na, Ka, Li, K, NH4, NH3-CH2-CH2-OH, or NH2(CH2-CH2-OH)2;
where n is 2, X is Mg, Zn, Zr, Ba, or Ca;
where n is 3, X is Al, Mn, or Fe; and
where n is 4, X is Ti or Zr; and further
(claim 5) wherein R is aryl or alkaryl, optionally wherein the alkaryl is 2,3-dialkylnaphthyl.
For example, sodium dodecyl benzene sulfonate has the structure:
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Which is an n of 1, an R of 18 carbons, and an X of Na.
Alternatively, even if it were somehow found that Gul fails to disclose this per se, 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 Gul to include, specifically, sodium dodecyl benzene sulfonate, with a reasonable expectation of success, in order to provide the simplest salt of the dodecyl benzene sulfonate disclosed by Gul.
Response to Arguments
Applicant's arguments filed 6 March 2026 with respect to claims rejected under 35 USC § 102 (and/or 103) over Gul have been fully considered but they are not persuasive.
In Applicant’s arguments, Applicant states:
“The disclosures of Gul are centered on the novel structure and properties of alkoxylated 4-(alkyloxy)phenol/aldehyde resins, the structure of which is shown at paragraph [0025] of Gul. The resins are demulsifiers - that is, emulsion breakers. Gul, Abstract and elsewhere throughout. The presence of demulsifier resins is excluded from the compositions of instant claim 1 that consists essentially of the recited components, since the presence of a demulsifying resin therein would materially alter the instantly claimed compositions' basic and novel characteristics and it's intended purpose as an asphaltene inhibitor. In particular, the instantly claimed compositions obtain the reported benefit of preventing asphaltene deposition, further as demonstrated in the instant Application at Example 2. As one of ordinary skill in the art understands, asphaltenes exist in aggregated colloidal or emulsified states within produced fluids: accordingly, adding a demulsifying resin such as the resins of Gul to the instantly claimed compositions would likely result in more deposition of asphaltene due to the destabilization of these aggregated structures by the demulsifier resin, which would defeat the intended purpose of the instant asphaltene inhibitor compositions in preventing asphaltene deposition.
Accordingly, claim 1 excludes the demulsifier resins of Gul and is therefore not anticipated by Gul” (p.8-9) (underlining added).
However, as in MPEP 2111.03, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original) (Prior art hydraulic fluid required a dispersant which appellants argued was excluded from claims limited to a functional fluid "consisting essentially of" certain components. In finding the claims did not exclude the prior art dispersant, the court noted that appellants’ specification indicated the claimed composition can contain any well-known additive such as a dispersant, and there was no evidence that the presence of a dispersant would materially affect the basic and novel characteristic of the claimed invention. The prior art composition had the same basic and novel characteristic (increased oxidation resistance) as well as additional enhanced detergent and dispersant characteristics.).
In this case, the Office observes that Applicant’s specification indicates that the claimed composition can contain additives such as “one or more demulsifiers” (Specification [0069]), and there is no evidence that the presence of demulsifiers would materially affect the basic and novel characteristic of the claimed invention. Moreover, the Gul prior art composition has the same basic and novel characteristic asserted by Applicant (e.g., Gul [0005] “Polymers and compositions are provided and can be used, for example, in methods of dispersing and/or inhibiting the deposition of asphaltenes found in hydrocarbons using a class of 4-(alkyloxy) phenol/aldehyde polymer resins as asphaltene dispersants/inhibitors” and [0023] “New and improved solvents and treatments are needed to mitigate agglomeration and deposition of asphaltenes. To that end, the asphaltene-inhibiting compositions provided herein are effective in dispersing asphaltenes and preventing their deposition”).
Accordingly, “consisting essentially of” does not exclude the demulsifier resins of Gul, based on the current evidence.
Applicant is also reminded that, as in MPEP 2111.03, for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising."
Applicant has not actually provided a clear indication in the specification or claims of what the basic and novel characteristics are, except perhaps broadly “asphaltene inhibiting,” which Gul also discloses per se. Accordingly, the term “consisting essentially of” will be construed as equivalent to “comprising,” and Gul anticipates the claim as written.
Accordingly, this argument and the other arguments which depend upon this argument are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREW SUE-AKO whose telephone number is (571)272-9455. The examiner can normally be reached M-F 9AM-5PM EST.
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/ANDREW SUE-AKO/Primary Examiner, Art Unit 3674
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